New Patent System in Hong Kong (Effective 19 December 2019)
Frequently
Asked Questions
List of
Abbreviations
|
OGP |
Original
Grant Patent |
|
PO |
Patents
Ordinance (Cap 514) as amended by |
|
|
Patents
(Amendment) Ordinance 2016 (Ord. No. 17 of 2016) |
|
PGR |
Patents
(General) Rules (Cap 514C) as amended by |
|
|
Patents
(General) (Amendment) Rules 2019 (L.N. 35 of 2019) |
|
Registrar |
Registrar
of Patents |
1.2 What are
the main differences between a standard patent (O) and a short-term patent?
1.3 Why should
I choose to apply for standard patent protection under the new OGP system?
1.4 How long
does it generally take to obtain grant of a standard patent (O)?
1.6 How long
does a granted standard patent (O) stay valid?
1.7 When will
I need to pay the renewal fee for a standard patent (O)? (s. 39 PO; s. 32 PGR)
1.8 How can I
apply for public funding in support of my patent application?
2 Filing
requirements of standard patent (O) application
3 Examination of
standard patent (O) application on compliance with formal requirements
4 Publication of
standard patent (O) application
4.2 Can I request
early publication of a standard patent (O) application? (s. 37Q(2) PO)
5 Substantive examination
of standard patent (O) application
6 Other matters in
relation to a standard patent (O) application
7 Refinement to
the pre-existing short-term patent system
7.9 Is substantive examination mandatory
for grant of a short-term patent? (s. 127B PO)
8 Other major
changes to the pre-existing patent system
8.1 Revised official fees (Schedule 2,
PGR)
8.2 Important time limits (s. 100-100AAD,
Schedule 4, PGR)
8.3 What is the regulatory measure
on patent practice under the new patent system? (s. 144A PO)
Introduction
The new patent
system introduces an OGP system while retaining the pre-existing
“re-registration” system for grant of standard patents, refines the
pre-existing short-term patent system and introduces an interim measure of regulating
patent practice by prohibiting use of certain misleading or confusing titles
and descriptions.
The following
questions and answers seek to provide general information on the new patent
system for reference. They are however
not intended to be exhaustive and are also not meant to offer any advice.
1
OGP
system
1.1 What are the main
differences between an original grant patent and the pre-existing patents which
have been granted by the Patents Registry for years under the Patents
Ordinance?
Application route
An original grant
patent is a kind of standard patent (known as “standard patent (O)”) that is
granted through a new and direct filing route introduced by the OGP system.
Comparing to
applications for the traditional standard patents (renamed as “standard patent
by re-registration” or “standard patent (R)”) granted by the Registrar under
the pre-existing “re-registration” system, a standard patent (O) application
can be filed directly in Hong Kong, i.e. its applicant is not required
to file an earlier corresponding patent application with any of the 3
designated patent offices, namely the China National Intellectual Property
Administration in Mainland China, the United Kingdom Intellectual Property
Office or the European Patent Office (for patent applications designating the
United Kingdom), which is otherwise a pre-requisite to applying for a standard
patent (R) under the re-registration system.
Examination by the Registrar
Where a standard
patent (R) application is only subject to formality examination by the
Registrar as to whether the necessary information and documents in support of
the application have been filed in compliance with the statutory requirements,
a standard patent (O) application is subject to both formality and substantive
examinations by the Registrar. The
latter type of examination requires the Registrar to determine mainly if the
claimed invention satisfies the patentability requirements, e.g. whether such
invention is new, involves an inventive step and is industrially applicable.
1.2 What are the main
differences between a standard patent (O) and a short-term patent?
Maximum protection term
As a kind of
standard patent, a standard patent (O) has a maximum protection term of 20
years. On the other hand, the
maximum protection term of a short-term patent is only 8 years.
Restriction of number of claims per patent application
Subject to the
requirement that a patent application may only relate to either 1 invention or
a group of inventions that are so linked as to form a single inventive concept
(“unity requirement”)—
a.
there is no
restriction of the number of claims, whether independent or dependent, which an
application for standard patent (O) or standard patent (R) may contain; and
b.
a short-term patent
application can however only contain 2 independent claims at most but the
number of dependent claims that the application may contain is not
restricted.
Examination by Registrar
Whilst a standard
patent (O) application is subject to both formality and substantive
examinations by the Registrar, a short-term patent application is generally
subject to formality examination by the Registrar before grant, but a
short-term patent, upon grant, is subject to a request for post-grant
substantive examination (see 7.9-7.24 below).
1.3 Why should I choose to
apply for standard patent protection under the new OGP system?
The
OGP system provides you with a new and direct filing option of seeking standard
patent protection in Hong Kong. By
offering a direct filing route for seeking standard patent protection of a
maximum term of 20 years, the OGP system serves to provide a convenient route
to acquire standard patent protection for inventions in Hong Kong. In this connection, an application for
standard patent (O) is generally most appropriate to safeguard a single
invention (including a group
of inventions that are so linked as to form a single inventive concept) that is—
a.
complex
in nature; and
b.
anticipated to have longer
exploitation/commercialization terms in the Hong Kong market.
That said, which type of patent is the most
appropriate to apply for varies on a case-by-case basis which is dependent upon
the individual patent filing/protection/commercialization strategies. As a matter of prudence, it is advisable to seek professional advice on the patent
filing strategy that is most effective and practicable to safeguard the rights
in or under an invention.
1.4 How long does it
generally take to obtain grant of a standard patent (O)?
The entire examination process of a standard patent
(O) application from filing to grant is normally expected to take at least 2 to
3 years given that the application has to undergo the following key examination
procedure—
a.
formality examination involving examination on—
(i)
minimum requirement for according a date of filing
(see 2.2 below); and
(ii)
formal requirements (see 3.1 below);
b.
publication of the application (normally takes
place around 18 months after the date of filing or the earliest priority date
if priority right is claimed) (see 4.1-4.2 below); and
c.
substantive examination, inclusive of review of the Registrar’s provisional refusal
of the application, if any (only upon the applicant’s request) (see 5.1-5.12
below).
Deficiencies in an application raised by the
Registrar during formality or substantive examination will inevitably prolong
the overall examination process given the applicant’s statutory entitlement to
addressing the office action within the prescribed period (see 2.4, 3.2, 5.5,
5.6 and 5.9-5.11 below).
The overall examination time frame can be shortened
if—
a.
the standard patent (O) application contains all
the required information and documents
in support of the application;
b.
the applicant elects to file a request for early publication
of the application as soon as practicable;
c.
the applicant promptly files a request for
substantive examination; and
d.
the applicant promptly responds to any office action raised by the
Registrar throughout the examination of the application.
1.5 Do I need to instruct
an agent (e.g. a patent practitioner) to prepare the supporting documents for
my standard patent (O) application?
There is no strict
requirement that a patent applicant must be represented by an agent nor that a
patent application must be filed by an agent.
Please however note
that filing a patent application for an invention generally involves highly
specialized/technical knowledge and skills for drawing up and preparing the
necessary supporting documents. In
particular, precise drafting of patent documents (e.g. claims and
specifications) on descriptions of the claimed invention(s) in support of a
patent application for the invention(s), and timely filing coupled with
successful prosecution of such patent application are necessary to safeguard
the rights in or under such inventions.
All these essential pre-filing and post-filing steps require highly
specialized knowledge and expertise for addressing the material legal and
technical issues. More importantly,
one should also note that the novelty of a claimed invention would generally be
lost upon disclosure (e.g. publication of a patent application for the
invention). In particular, where a
patent application for an invention has been published but subsequently
abandoned/withdrawn/refused as a result of poor drafting or prosecution of the
application, there is a risk that the patent applicant may not remedy or
rectify the position by re-filing the application for the same invention given
that the novelty of the invention would likely be subject to
objection/challenge. Accordingly,
as a matter of prudence, it is advisable for patent applicants to seek
professional assistance as early as practicable in formulating patenting
strategies, drafting and prosecuting patent applications, especially those for
inventions involving complex technologies and/or patenting issues, to safeguard
the rights in or under the inventions.
1.6 How long does a
granted standard patent (O) stay valid?
Subject to annual renewal (see 1.7 below), the term of a standard patent
(O) lasts for a maximum of 20 years from the date of filing of the application
for the patent.
1.7 When will I need to
pay the renewal fee for a standard patent (O)? (s. 39 PO; s. 32 PGR)
In order to keep a standard patent (O) in force up to its maximum term
of 20 years, you are required to pay the first renewal fee which is due on the
fourth anniversary date of filing of the application for the patent following
the date of grant of a standard patent (O). The subsequent renewal payment falls due
on every anniversary date thereafter until the expiry of the 20-year patent
protection term.
You can pay the renewal fee up to 3 months before the due date (see 8.1 below about the
amount of the payable renewal fee).
You can still renew the patent within a 6-month grace period after the
due date but an additional late fee will be incurred.
Here are two hypothetical examples—
Example 1:
Example 2:
Note: A
time limit that expires on a day which is not a business day shall be extended to
the next business day.
1.8 How can I apply for
public funding in support of my patent application?
The Innovation and Technology Commission administers the Patent
Application Grant scheme to assist Hong Kong companies and individuals to apply
for patents for the first time (see https://www.itc.gov.hk/en/funding/pag.htm for details of the scheme).
2
Filing
requirements of standard patent (O) application
2.1 How to apply for a
standard patent (O)? What are the
required documents and information in support of the application? (s. 37L PO;
ss. 31M, 31N, 31O, 31P, 31Q, 31S, 31T, 56B & 100AAD PGR)
A standard patent (O) application
must be made to the Registrar in Patents
Form OP1 (available at https://www.ipd.gov.hk/eng/forms_fees/patents.htm) through electronic filing (https://efiling.ipd.gov.hk) or paper filing with the prescribed fees (HK$345 for electronic
filing / HK$480 for paper filing; and HK$68 for advertisement).
In general, the essential documents
required to be filed with Patents Form
OP1 are—
a. a specification in either English or Chinese, containing a
description of the underlying invention, at least one claim and drawings; and
b. an abstract in English and Chinese
If you are making a standard patent
(O) application for an invention but are not an inventor, you have to
file a statement of inventorship in Patents
Form OP1A indicating how you acquire the right to apply for the standard
patent (O) for the invention.
Please refer to 2.3 and 2.7 for other documents that may be
required in the applicable circumstances.
2.2 What is the minimum
requirement for having a date of filing accorded to my standard patent (O)
application? (s. 37M PO; ss. 31V
& 31W PGR)
The Registrar will accord a date of filing to your standard patent (O) application if your application
contains the following 3 elements—
a. an indication that a
standard patent (O) is sought;
b. information identifying
the applicant, such as the full name of the applicant; and
c. (i)
information/material that appears to be a description of an invention, or
(ii) a reference to an
earlier specified patent application (whether a standard patent (O)/short-term patent application or a patent application
filed in or for any Paris Convention country or WTO member) filed by yourself
or your predecessor in title by making a statement in Part 06 of Patents Form OP1 to indicate that the
description and drawings of your present standard patent (O) application are
wholly contained in the earlier specified patent application.
Filing a duly completed Patents
Form OP1 (with relevant enclosure containing a description of the claimed
invention to address requirement (c)(i) above, if applicable) will generally suffice to satisfy
the minimum requirement.
Please also refer to 2.8 about the importance of having the
date of filing accorded by the Registrar for a standard patent (O) application.
2.3 How to claim a
priority right for my standard patent (O) application by reference to my
earlier patent application? What is
the time limit to make the priority claim? (ss. 37C, 37E PO; ss. 31C & 31M
PGR)
You may claim a priority right for
your standard patent (O) application by reference to your earlier patent
application filed in or
for any Paris Convention country or WTO member (“the
priority application”). To make such claim properly, you should normally file your standard patent (O)
application within 12 months from the date of filing of the priority
application together with the following supporting documents—
a. a statement of priority
(Part 05 of Patents Form OP1);
b. a copy of the priority
application; and
c. a copy of the
certificate issued by the patent authority that received the priority
application, stating the date of filing of the
priority application.
If the priority application is a
Hong Kong application, it is not necessary to file the respective copies
of the priority application and certificate.
Multiple priorities based on multiple priority applications,
even originating from different Paris Convention countries and/or WTO members,
may be claimed, and the 12-month time limit shall be calculated from the
earliest date of filing of the relevant priority applications.
2.4 How to correct the
deficiencies in an application raised by the Registrar in the examination on
minimum requirement? What is the
time limit? Is such time
extendible? (s. 37M PO; s. 31V PGR)
Upon conducting examination on minimum requirement, and upon
finding any deficiencies, the Registrar will notify the applicant of the
deficiencies and require the applicant to correct the deficiencies in writing
within 2 months after the date of the notice. Such time limit is not
extendible. If the deficiencies are
not duly corrected, the application as a matter of law will not be
further dealt with as an application for standard patent (O).
2.5 If I have omitted a
priority claim at the time of filing my standard patent (O) application, will I
be able to make such priority claim?
If so, how and what is the time limit? (ss. 37C, 37E PO; ss. 31C &
31M PGR)
If you have duly filed your standard patent (O) application
within 12 months from the date of filing of your previous application based on
which you intend to claim priority for your standard patent (O) application,
you are still allowed to claim priority within 16 months (which is non-extendible) from the earliest
priority date claimed by filing Patents
Form OP5 with the prescribed fee (HK$135) provided that a request for early
publication of the standard patent (O) application has not been made or
such request has been withdrawn before preparations for publication of your
standard patent (O) application are completed.
2.6 If I have filed a
previous patent application but omitted to file a subsequent standard patent
(O) application (for which I intended to claim priority based on my previous
application) within the 12-month priority period, will I be able to file the
subsequent application and make the same priority claim afterwards? If so, how and what is the time limit? (s. 37D PO; s. 31B PGR)
If you have failed to file your standard patent (O)
application within the 12-month priority period,
you can still proceed with your filing and also make an application for
restoration of priority right provided that such application is made—
a. within 14
months (which is non-extendible) from the date of filing of your previous
application based on which priority is claimed for your standard patent (O)
application; and
b. before the date on which the preparations for publication of your standard
patent (O) application are completed.
Your restoration application should
be made by filing Patents Form OP5
with payment of the official fee of HK$405, and also accompanied by evidence
(in the form of statutory declaration) to—
(i) establish why the standard patent (O) application was not
filed in time; and
(ii) satisfy the Registrar that all reasonable care required by the
circumstances has been taken.
2.7 In what circumstances
can I make a claim on non-prejudicial disclosure of the underlying invention of
a standard patent (O) application which took place before filing the
application? (s. 37B PO; ss. 31A, 31M & 31ZR PGR)
Non-prejudicial disclosure refers to
disclosure of the underlying invention of a patent application which took place
before filing the application, but such pre-filing disclosure would not
be regarded as part of the state of the art. The conditions for non-prejudicial
disclosure are—
a.
the disclosure occurred within 6 months before the
date of filing of the patent application; and
b.
the disclosure was a result of—
(i)
evident abuse, e.g. breach of confidence, in
relation to the patent applicant; or
(ii)
display at an exhibition recognized by the Paris Convention on International
Exhibitions.
In order to claim non-prejudicial
disclosure, you have to make a disclosure statement (Part 09 of Patents Form OP1) and provide written
evidence in the form of statutory declaration. In the case of non-prejudicial
disclosure occurring in a recognized international exhibition, the written
evidence shall include—
·
a certificate issued by the
exhibition organizer stating the invention was displayed at the exhibition and
the date of first disclosure; and
·
an identification of the invention duly authenticated by the
exhibition organizer.
2.8 If I find that certain
parts of the description or drawings about the invention have not been properly
filed with my standard patent (O) application, am I still allowed to file those
missing description or drawings? If
so, what is the time limit to take action, and is there any impact on my
application as a result of filing those missing materials? (s. 37N PO; ss. 31X,
56C & 100AAB PGR)
You may file the missing description or drawings for your
standard patent (O) application (to which a date of filing has been accorded by
the Registrar) within 2 months (extendible, upon request to the Registrar, for
2 months) after the accorded date of filing of the application. Alternatively, the Registrar may notify
you of the requirement on filing the missing materials. In that case, you may file the missing
materials within 2 months from the date of such notice (extendible, upon
request to the Registrar, for 2 months).
Please however note that your filing of missing drawing or
descriptions will cause a change of the accorded date of filing of your
standard patent (O) application to the date on which the missing materials are
filed, unless—
·
you have claimed priority of a previous application
for your standard patent (O) application;
·
the missing description or missing drawing is
completely contained in the previous application;
·
you have requested that the accorded date of filing
of your standard patent (O) application remains unchanged; and
·
you have filed a copy of the previous application
and a statement indicating the location of the missing description or drawing
in the previous application within 16 months after the earliest date of
priority claimed (the translations of these documents should also be filed
within the prescribed period (see 2.9 below) if they are not in one of the
official languages).
2.9 Further to 2.8, if the
previous application that contains the missing description or drawing is not
in one of the official languages (i.e. English or Chinese), what is the time
limit for me to provide the translation? (s. 37N PO; ss. 31X, 56C & 100AAB
PGR)
Where any document or
part of a document which is not in one of the official languages (i.e. English or Chinese) is filed with the Registrar or sent to
the registry, it must contain a translation into one of the official languages
which should be adopted consistently throughout the application (including the
specification).
If you elect to file the missing description or drawings for your
standard patent (O) application on your own initiative, and such document is
not in the official language, the time limit for providing the translation of
the previous application in the language of specification in your standard
patent (O) application (with a statement indicating the
location of the missing description or drawing in the previous application) is 16 months after the
earliest date of priority claimed.
If you are filing the missing description or drawings in
response to the Registrar’s notice, the time limit for providing the
translation of the previous application in the language of specification in
your standard patent (O) application (with a statement
indicating the location of the missing description or drawing in the previous
application) is 2
months after the date of the notice, or 16 months after the earliest date
priority claimed, whichever expires later.
The deadline for filing a translation of the previous application in
either of the above two scenarios is extendible for 2 months provided that the
applicant files a request for extension (in Patents Form SP3) with payment of the official fee of HK$215 before
the expiry of the initial time limit.
3
Examination
of standard patent (O) application on compliance with formal requirements
3.1 What is the
examination on formal requirements and what are the examination requirements?
(s. 37P PO; s. 31Y PGR)
After according the date of filing
to a standard patent (O) application, the Registrar must examine the
application to ascertain whether the application complies with the formal
requirements under the patent legislation in order to ensure that the
application is in order for publication.
When examining the formal
requirements, the Registrar will check whether a standard patent (O) application—
a. is filed in the specified form (Patents Form OP1) in the applicant’s chosen language of proceedings
either in English or Chinese and signed by the applicant (Part 14 of Patents Form OP1);
b. contains an abstract in English and Chinese;
c. contains a specification in the language of proceedings with
a title of invention, a description of the invention, at least one claim, and
any drawing referred to in the description;
d. contains a list of the necessary documents in support of the
application, with the number of sheets of each individual document indicated
(Part 11 of Patents Form OP1);
e. provides the name and address of the applicant as well as
the name of the inventor (Parts 02 and 08 of Patents Form OP1);
f. specifies an address in Hong Kong for service of documents
(Part 12 of Patents Form OP1);
g. (if the
applicant is not an inventor)
provides the last known address of each inventor and an inventorship statement
(Patents Form OP1A);
h. (if priority
right is claimed) contains a statement of priority
(Part 05 of Patents Form OP1) and
the priority document;
i. (if a reference
to an earlier specified patent application is made) contains a copy of the earlier specified patent application and a copy of the certificate issued by the authority which
received that application;
j. (if non-prejudicial
disclosure is claimed) contains the statement about the
claim and supporting evidence (in the form of statutory declaration) (Part 09
of Patents Form OP1);
k. (if the
invention requires the use of a micro-organism for performance of the invention) contains information on the availability of samples of the
micro-organism to the public (Part 04 of Patents
Form OP1);
l. (for inventions
involving nucleotide and amino acid sequences) contains a sequence listing as a part of the description in
the specification; and
m. (if any filing document is not entirely in the language of
proceedings either in English or Chinese)
contains a translation of such document in the language of the proceedings.
3.2 How to correct the
deficiencies in a standard patent (O) application raised by the Registrar in
examining the formal requirements?
What is the time limit to do so? Is such time limit extendible? (s. 37P
PO; ss. 31Y & 100AAB PGR)
In examining a standard patent (O) application to determine
if it complies with the formal requirements, the Registrar will notify the
applicant by notice of the deficiencies in the application as identified by the
Registrar, and require the applicant to correct such deficiencies in writing
within 2 months after the date of the notice.
If the deficiencies are not duly corrected—
·
(where such deficiencies only relate
to a claim to a right of priority) the right of priority is lost for the
application;
·
(in any
other case) the application is regarded as being withdrawn or is refused.
The time limit for the applicant to correct the deficiencies
is extendible for 2 months provided that the applicant files a request for
extension (in Patents Form SP3) with
payment of the official fee of HK$215 before the expiry of the initial 2-month
period.
4
Publication
of standard patent (O) application
4.1 When will a standard
patent (O) application normally be published by the Registrar? What will be published? Is there any restriction on publication? (s. 37Q PO; s. 31Z PGR)
Upon satisfying that a standard patent (O) application
complies with the formal requirements, the Registrar will publish the
application, which normally takes place as soon as practicable upon expiry of
18 months after the date of filing, or the earliest priority date, if priority
is claimed.
The publication includes the application as filed and any
amendment subsequently requested (e.g. any amendment of the claims in, and any
addition of any new claim to, the application as filed) but before the
Registrar’s completion of preparations for publication of the application.
The Registrar, in publishing a standard patent (O)
application, may omit from the specification contained in the application any
matter—
·
that disparages any person in a way likely to
damage the person; or
·
the publication or working of which would be
contrary to public order or morality, or be likely to encourage offensive immoral or anti-social behavior.
4.2 Can I request early
publication of a standard patent (O) application? (s. 37Q(2) PO)
Yes, you may request early publication of a standard patent
(O) application (i.e. publication within 18 months after the date of filing of
the application, or the earliest priority date if priority is claimed) in
writing either—
·
at the time of filing of the application (Part 10 of Patents Form OP1); or
·
after the date of filing of the application.
5
Substantive examination of standard patent (O)
application
(a) Request for substantive
examination
5.1
Will the Registrar initiate substantive examination
of my standard patent (O) application after publication of the application?
No, it is your responsibility
as a standard patent (O) applicant to request the Registrar to conduct
substantive examination of your application and also pay the official
chargeable fee in good time. Your
application will be regarded as being withdrawn should you fail to make such
request timely.
5.2 How to request the Registrar to conduct substantive examination of my
standard patent (O) application? Is
there any chargeable official fee for filing such request? What is the time limit for filing such
request? (s. 37T PO; s. 31ZC PGR)
You need to file a request with the Registrar for substantive
examination in Patents Form OP2 and
pay the chargeable official fee of HK$4,000 no later than one month after the
date of the request.
Here are the relevant time limits for filing a request for substantive
examination—
a.
for a standard patent (O) application that is not
a divisional application—
within 3 years (non-extendible) after the date of filing,
or the earliest priority date, if any, of the application
b.
for a standard patent (O) application that is a
divisional application—
generally
within 3 years (non-extendible) after the date of filing, or the earliest
priority date, if any, of the parent application, unless—
·
where the fulfilment date of the divisional
application (i.e. the earliest date on which the divisional application
complies with the minimum requirement (see 2.2 above)) is less than 2 months
before the expiry of the aforesaid 3-year period-- within 2 months
(non-extendible) after the fulfilment date of the divisional application; and
·
if the fulfilment date of the divisional application is on or after the
date of expiry of the aforesaid 3-year period—within 2 months (non-extendible)
after the fulfilment date of the divisional application.
5.3
Can I request accelerated substantive examination
for my standard patent (O) application? (s. 37Q(2) PO)
While there is no specific procedure on requesting the Registrar to
accelerate substantive examination of your standard patent (O) application, you
may expedite your application to undergo substantive examination by filing—
a.
a request for an early publication of your
application either—
·
at the time of filing the application (Part 10 of Patents Form OP1), or
·
as early as possible in writing after filing the
application; and
b.
a request for substantive examination as early as possible within the
prescribed time-limit (see 5.2 above).
(b) Requirements on substantive
examination
5.4
What are the examination requirements during
substantive examination of a standard patent (O) application? (s. 37U PO)
During substantive
examination of a standard patent (O) application, the Registrar will examine if
the application complies with the following major requirements—
·
the
invention, which is the subject of the application, is new, involves an
inventive step, and is susceptible of industrial application;
·
the
invention, which is the subject of the application, does not fall within
the list of matters excluded from patentability, such as a
discovery or scientific theory;
·
the
application discloses the invention in a manner sufficiently clear and complete
for it to be performed by a person skilled in the art;
·
the
claims contained in the specification define the matter for which protection is
sought or given, are clear and concise, are supported by the description in the
specification, and relate to a single inventive concept;
·
the
matter disclosed in the specification contained in the application does not
extend beyond that disclosed in the application as
filed, and, if the application is a specified new application*, the earlier
standard patent (O) application;
·
if priority is claimed and the Registrar locates
any prior art which is filed or published between the claimed priority date and
date of filing of the application, whether the applicant is entitled to the
priority claimed;
·
if an amendment has been made to the specification,
or the application is a specified new application*, whether any new
matter has been added to the application; and
·
whether the application is one of two relevant patent applications** that are
filed for
the same invention made by the same inventor and have the same date of filing
or date of priority claimed.
* Specified new application means—
a. a new standard patent
(O) application made in accordance with an order under section 37J(2) PO;
b. a new standard patent
(O) application referred to in section 37Z PO; or
c. a new standard patent
(O) application made in accordance with an order under section 55(4) PO.
** Relevant patent
application means—
a. a patent application
which is pending; or
b. a patent application
because of which a patent, being one that is in force, was granted.
(c) Office actions after request for
substantive examination
5.5
What
is the office action issued by the Registrar after I have requested the
Registrar to conduct substantive examination of my standard patent (O)
application? What is the time limit
to respond to such office action? (s. 37V PO; ss. 31ZD, 31ZE & 100AAB PGR)
If the Registrar is of the opinion that your standard patent (O)
application does not comply with any of the examination requirements
(see 5.4 above), the Registrar will inform you by an examination notice which sets
out the Registrar’s opinion and the reasons thereof.
To pursue your application, you must respond to the examination notice
in writing to address the Registrar’s opinion by filing—
·
a written representation to establish that your
application complies with each unfulfilled requirement as identified by the
Registrar; and/or
·
a request to amend your application by filing Patents Form P8 to enable your application to comply with each
unfulfilled requirement as identified by the Registrar.
The time limit for you to file your written response to the examination
notice is 4 months (extendible once by filing Patents Form SP3 for 2 months with payment of the extension fee of HK$215) after the date of the examination notice.
Your application will be regarded as being withdrawn should you fail to
timely file your written response to the examination notice.
5.6
Under
what circumstances will the Registrar raise any further office action after I
have timely filed my written response to the examination notice? What is the time limit to respond to
such further office action? (ss. 37V & 37W PO; ss. 31ZF, 31ZG & 100AAB PGR)
If the Registrar, having considered your written response to the
examination notice, is of the opinion that elaboration, revision or
clarification of any matter covered in your written response is required, the
Registrar will inform you by a further examination notice which sets out such
matter.
To pursue your application, you must respond to the further examination
notice in writing to address the Registrar’s opinion by filing—
·
a written representation to establish that your
application complies with each unfulfilled requirement as identified by the
Registrar; and/or
·
a request to amend your application by filing Patents Form P8 to enable your application to comply with each
unfulfilled requirement as identified by the Registrar.
The time limit for you to file your written response to the further
examination notice is 4 months (extendible once by filing Patents Form SP3 for 2 months with payment of the extension fee of HK$215) after the date of the further examination notice.
Your application will be regarded as being withdrawn should you fail to
timely file your written response to the further examination notice.
5.7
How many further examination notices will be issued
by the Registrar when examining my standard patent (O) application? (s. 37W PO;
ss. 31ZF, 31ZG & 31ZH PGR)
While the Registrar is empowered to issue multiple further examination
notices for affording you ample opportunities to elaborate, revise or clarify
any matter covered in your response to an examination notice or a further
examination notice, the number of further examination notices issued by the
Registrar varies from case to case. For example, if the Registrar, having
considered your written response to the examination notice and your response to
a further examination notice (if any), is of the opinion that your standard
patent (O) application does not comply with the examination requirement
concerned, and that there is no reasonable prospect for you to overcome the
office action concerned by making any elaboration, revision or clarification of
any matter, the Registrar will simply proceed with making a provisional
decision on refusal of your application and give you a provisional refusal
notice.
(d) Request to review the
provisional refusal notice issued by the Registrar
5.8
What can I do if I disagree with the Registrar’s
provisional decision on refusal of my standard patent (O) application? (s. 37V(3)(c) PO; ss. 31ZI & 100AAB PGR)
You may file with the Registrar a request to review (in Patents Form OP3) the Registrar’s provisional decision on refusal together with the
prescribed fee (HK$1,700). Your
request to review may contain the following—
·
a written representation to establish that your
application complies with each unfulfilled requirement as identified by the
Registrar; and/or
·
a request to amend your application by filing Patents Form P8 to enable your
application to comply with each unfulfilled requirement as identified by the
Registrar in the Registrar’s provisional refusal notice.
The time limit to file a request to review is 2 months (extendible once
by filing Patents Form SP3 for 2
months with payment of the extension fee of HK$215) after the date
of the provisional refusal notice issued by the Registrar.
If you fail to timely file a request to review the Registrar’s
provisional decision on refusal with payment of the official fee, the Registrar
will make a final decision of refusal to grant the standard patent (O) and give
you a final refusal notice.
(e) Office actions after request
to review
5.9
Under what circumstances will the Registrar issue
an office action after I have filed a request to review the provisional refusal
notice issued by the Registrar?
What is the time limit to respond to such office action? (ss. 37V & 37W PO; ss. 31ZJ, 31ZK
& 100AAB PGR)
If the Registrar, having considered your request to review, is of the
opinion that your standard patent (O) application still does not comply with
any unfulfilled examination requirement as identified in the Registrar’s
provisional refusal notice, the Registrar will inform you by a review opinion
which sets out the Registrar’s reasons. Depending on the individual
circumstance, the Registrar may also afford you an opportunity to request a
hearing so as to address the office action.
To pursue your application, you must respond to the review opinion by
filing—
·
a written representation to establish that your
application complies with each unfulfilled requirement as identified by the
Registrar; and/or
·
a request to amend your application by filing Patents Form P8 to enable your application to comply with each
unfulfilled requirement as identified in the Registrar’s review opinion.
Where the Registrar has, in the review opinion, afforded you an
opportunity to request a hearing, you may, in addition to, or as an alternative
to filing your response to the review opinion in the aforesaid manner, file a
request for hearing by filing Patents
Form OP6 together with payment of the official fee of HK$1,700.
The time limit to file a written response to a review opinion issued by
the Registrar or a request for hearing (if applicable) is 2 months (extendible
once for 2 months by filing Patents Form
SP3 with payment of extension fee of HK$215 before expiry of the initial time
limit – request for hearing, or within 2 months after such expiry – written
response) after the date of the review opinion.
If you fail to timely respond to a review opinion and pay the applicable
official fee (if any), the Registrar will make a final decision of refusal to
grant your standard patent (O) application and give you a final refusal notice.
5.10
Under
what circumstances will the Registrar raise any further office action after I have
timely responded to the review opinion?
What is the time limit to respond to such further office action? (ss. 37V & 37W PO; ss.
31ZL, 31ZM & 100AAB PGR)
If the Registrar, having considered your request to review, your written
response to the review opinion, and also having held the hearing as requested
by you (if any), is of the opinion that elaboration, revision or clarification
of any matter covered in your written response and/or the hearing (if any) is
required, the Registrar will inform you by a further review opinion which sets
out such matter. Depending on the
individual circumstances, the Registrar may also afford you an opportunity to
request a hearing.
To pursue your application, you must respond to the review opinion by
filing—
·
a written representation to establish that your
application complies with each unfulfilled requirement as identified by the
Registrar; and/or
·
a request to amend your application by filing Patents Form P8 to enable your application to comply with each
unfulfilled requirement as identified in the Registrar’s further review
opinion.
Where the Registrar has, in the further review opinion, afforded you an
opportunity to request a hearing, you may, in addition to, or as an alternative
to filing your response to the further review opinion in the aforesaid manner,
file a request for hearing by filing Patents
Form OP6 together with payment of the official fee of HK$1,700.
The time limit to file a written response to a further review opinion
issued by the Registrar or a request for hearing (if applicable) is 2 months
(extendible once for 2 months by filing Patents
Form SP3 with payment of extension fee of HK$215 before expiry of the initial time
limit – request for hearing, or within 2 months after such expiry – written
response) after the date of the further review opinion.
If you fail to
timely respond to a further review opinion and pay the applicable official fee
(if any), the Registrar will make a final decision of refusal to grant your
standard patent (O) application and give you a final refusal notice.
5.11
How many further review opinions will be issued by
the Registrar when examining my standard patent (O) application? (ss. 37W &
37Y PO; ss. 31ZL, 31ZM & 31ZN PGR)
While the
Registrar is empowered to issue multiple further review opinions for affording
you ample opportunities to elaborate, revise or clarify any matter covered in
your response to a review opinion/a further review opinion or at the hearing as
requested by you (if any), the number of further review opinions issued by the
Registrar varies from case to case.
For example, if the Registrar, having considered your request to review,
your response to the review opinion, your response to a further review opinion
(if any), and also having held the hearing as requested by you (if any), is of
the opinion that your standard patent (O) application does not comply with the
examination requirement concerned, and that there is no reasonable prospect for
you to overcome the office action concerned by making any elaboration, revision
or clarification of any matter, the Registrar will simply proceed with making a
final decision on refusal of your application and give you a final refusal
notice.
(f) Compliance with an unfulfilled
examination requirement raised in office action
5.12 Will my standard patent (O) application be granted after my response to
an office action raised at any stage of substantive examination of my
application has overcome such office action? (ss. 37V & 37X PO; ss. 31ZO
& 31ZP PGR)
Not necessarily. If the Registrar
is of the opinion that your response to an office action concerning an
unfulfilled examination requirement in your standard patent (O) application has
overcome such office action, the Registrar must continue to carry out the
substantive examination of your application to ensure that your application
complies with all examination requirements.
Where the Registrar is ultimately of the opinion that your application
has complied with all the examination requirements (see 5.4 above), the
Registrar will grant you a standard patent (O) and will publish, among others,
the patent specification which is accessible through the Online Search System
of the Intellectual Property Department, advertise the fact of such patent
grant in the Hong Kong Intellectual Property Journal and issue a certificate of
grant of such patent to you.
On the other hand, if the Registrar is still of the opinion that your
application does not comply with another/other examination requirement(s) (see
5.4 above), the Registrar will continue issuing further office action by
another examination notice which sets out the Registrar’s opinion and the
reasons thereof, and afford you ample opportunities to address such office
action.
5.13 What can I do if I disagree with the Registrar’s final decision on
refusal of my standard patent (O) application? (s. 130 PO)
You may file an appeal to the
Court of First Instance against the Registrar’s final decision on refusal of
your standard patent (O) application.
6
Other matters in relation to a standard patent (O)
application
(a) Divisional applications
6.1
When should I need to file a divisional
application? (ss. 37Z, 78(1)(d) & 103(1) PO; s. 31ZS
PGR)
If the Registrar considers that your standard patent (O)
application does not meet the unity requirement (see 1.2 above), you may amend your application or file one or more divisional applications to
meet that requirement.
A divisional application can be filed at any time when the earlier
(parent) application is pending Subject to the following conditions—
·
If the Registrar has granted a
parent standard patent (O), a divisional application must be filed before
preparations for publication of the specification of the parent patent are
completed.
·
If the Registrar has issued a notice
to refuse a parent standard patent (O) application after conducting examination
on the formal requirements, a divisional application must be filed within 2
months (non-extendible) after the date of the refusal notice.
·
On the other hand, if the Registrar has
issued a final decision on refusal of a parent standard patent (O) application
after conducting substantive examination of the application, a divisional
application must be filed within 2 months (non-extendible) after the date of
the final refusal notice.
·
If an appeal to the court against
the Registrar’s final refusal notice is made, a divisional application may be
filed within a period specified by the Registrar.
(b) Voluntary amendments to
standard patent (O) applications
6.2
Can I make a voluntary amendment to a standard
patent (O) application? (ss. 37ZA & 103(2) PO; s. 31ZT PGR)
Yes, you can file voluntary amendments to a standard patent (O)
application (in Patents Form P8) at
the following junctures—
·
once before preparations for
publication of the standard patent (O) application are completed;
·
when filing a request for
substantive examination; and
·
within 3 months (non-extendible) from the date of the notice
issued by the Registrar informing you that the application has entered into the
stage of substantive examination.
(c) Applications for withdrawal of
standard patent (O) applications
6.3
Can I withdraw a standard patent (O) application to
prevent it from being published, and if so, when can it be done? (ss. 37O(1)(a), 37ZB & 37ZC PO)
Yes, you can withdraw a standard patent (O)
application to prevent the application from publication by filing a written
notice at any time before preparations for publication of the standard patent
(O) application are completed.
(d) Remedies to rectify failure to
comply with time limits
6.4
What if I have missed a deadline for responding an
office action during substantive examination of my standard patent (O)
application (e.g. by filing a written response to an examination notice or a
further examination notice, a request to review, a written response to a review
opinion or a further review opinion? (s. 100AAB PGR)
You can still request the Registrar to grant a time extension for 2
months by filing Patents Form SP3
with payment of the official fee of HK$215 within 2 months after expiry of the
original deadline.
6.5
What can I do if my standard patent (O) application
is regarded as being withdrawn or refused due to my failure to comply with a
time limit to correct a deficiency? (s. 37ZD PO; ss. 31ZU & 31ZV PGR)
You may reinstate your application by filing a
request for reinstatement in Patents
Form P13 with payment of the official fee of HK$405 within 2 months after
the withdrawal or refusal of your application. At the same time, the omission which
constituted the failure to comply with the time limit should be made good. Otherwise the request for reinstatement
is not deemed to be filed. The
reinstatement relief is however not available to rectify certain failures, such
as a failure to pay the prescribed filing or advertisement fee(s) within the
prescribed period and a failure to pay the prescribed fee for the substantive
examination. Please refer to
section 14.32(b) of the Patents Examination Guidelines about exclusion of the
reinstatement relief.
In some cases, you may, for the purpose of
restoring the rights in your application that have been lost, apply to the
Registrar for restoration of rights by satisfying the Registrar that the
failure to comply with the time limit occurred in spite of you having taken all
reasonable care required by the circumstances. Your application for restoration must be
made in the Patents Form P13 with
payment of the official fee of HK405 within 1 year after the expiry of the
relevant time limit or 2 months after the removal of the cause of
non-compliance, whichever is the earlier.
The restoration relief is however not
available to rectify the following circumstances—
a.
a failure to claim or restore a priority right;
b.
a failure to file or withdraw a missing description
or drawing and/or the relevant documents within the prescribed time limits;
c.
a failure to file divisional applications within
the prescribed time limits; and
d.
a failure to amend or withdraw a patent application within the prescribed
time limits.
Please refer to sections 14.35(f), (g), (h) and (i) of the Patents Examination Guidelines about exclusions
of the restoration relief.
(e) Post-grant amendments to
standard patent (O)
6.6
Can I, as the proprietor of a standard patent (O),
amend the specification of my patent? (ss. 46(2)(b) &
103(3) PO; s. 38A PGR)
The proprietor of a standard patent (O) may, at any time after grant,
apply to either the Registrar or the Court of First Instance for amendment to
the specification of the patent.
Where a patent proprietor opts to file an application for amendment with
the Registrar, the application should be filed in Patents Form OP7 and
accompanied by—
·
a copy of the specification containing clear
mark-ups indicating the proposed amendment;
·
evidence establishing the circumstances underlying
the amendments; and
·
payment of the official fee of HK$1,700.
The Registrar may either accept the requested amendment in whole or in
part as an allowable amendment or
refuse the requested amendment. Any allowable amendment will be published by the Registrar
and the fact of such publication will also be advertised in the Hong Kong
Intellectual Property Journal, which is subject to
opposition by others (see 6.7 for details).
6.7
How to oppose an allowable amendment to the
specification of a granted standard patent (O)? (ss.
46(2)(b) & 46(3)(c) PO; ss. 38B-38F & 100AAB PGR)
Any person (“opponent”) who intends to oppose an allowable amendment to
a standard patent (O) may file an opposition notice in Patents Form P2 to be accompanied by—
·
a statement setting out the facts on which the
opponent relies and the relief sought; and
·
payment of the official fee of HK$1,525.
The opposition notice must be filed within 1 month after the date on
which the fact of publication of the allowable amendment is advertised in the Hong Kong
Intellectual Property Journal. This
time limit is extendible for 1 month by filing Patents Form SP3 with payment
of an official extension fee of HK$215 before the expiry of the initial time
limit.
(f) Observations on standard
patent (O) applications by persons other than patent applicants and the
Registrar
6.8
If I have an observation on the patentability of an
invention underlying a standard patent (O) application, and wish the Registrar
to take into account my observation in examining the application, what can I
do? (s. 37R PO; s. 31ZA PGR)
You may file with the Registrar a written notice setting out your
observation on the patentability of the invention underlying a standard patent
(O) application and also the grounds on which your observation is based after
publication of the application.
Upon receipt of your notice, the Registrar will, as soon as practicable,
send a copy of your notice to the patent applicant, and will consider your
observation when conducting substantive examination of the patent
application. However, the Registrar
will not consider your observation if such is filed after the grant,
final refusal or deemed withdrawal of the patent application in question.
By merely filing your observation, you do not automatically
become a party to
any proceedings in relation to the standard patent (O) application.
7
Refinement
to the pre-existing short-term patent system
(a) Minimum requirement for having
a date of filing accorded
7.1 Is there any change to the minimum requirement for obtaining a date of
filing for my short-term patent application? (s. 114 PO)
The pre-existing minimum requirement for according a date of filing to a
short-term patent application basically remains unchanged, namely a short-term
patent application must contain—
a. an indication that a
short-term patent is sought;
b. information
identifying the applicant; and
c. something that appears to be a
description of an invention.
An alternative is
however introduced into requirement (c) under the new patent system, namely the
short-term applicant complies with this requirement if the short-term patent
application contains—
(i) a reference to an
earlier specified application (whether a standard
patent (O)/short-term patent application or a patent application filed in or
for any Paris Convention country or WTO member) made by the applicant or the
applicant’s predecessor in title; and also
(ii) a statement indicating
that a description and the drawings (if any) of the invention, which is the
subject of the short-term patent application, are completely contained in the
earlier specified application.
7.2
What is the new time limit for correcting the
deficiencies on minimum requirement? (s. 114 PO; s. 67(2)(b) PGR)
Under the new patent system, the time limit for a short-term patent
applicant to correct the deficiencies on minimum requirement, if any, is
extended to the non-extendible period of 2 months after the date of the
Registrar’s notice which notifies the applicant of the deficiencies.
(b) Formal requirements
7.3
What are the changes to the formal requirements of
a short-term patent application? (s. 113 PO; ss. 56B(3),
58, 67A, 69 & 73A PGR)
Number of independent claims allowed
The maximum allowable
number of independent claims in the specification of a
short-term patent
application has been relaxed from 1 to 2.
Compliance with minimum requirement - reference to an earlier specified
application
If you have made reference to an earlier specified application at the
time of filing the application (see 7.1 above), you must file the following
documents within the prescribed time limits —
a.
a copy of the earlier specified application; and
b.
a copy of the certificate issued by the authority that received the
earlier specified application.
And if the earlier specified application and the certificate issued by the
authority that received the earlier specified application are not in English or
in Chinese,
you must also file—
(i) within the prescribed time limit, a translation of the earlier specified
application in the language of the proceedings or (where applicable) a
statement made by the translator verifying to the satisfaction of the Registrar
that the translation of the specification is complete and accurate; and
(ii) a translation of
the certificate
in the language of the proceedings.
Claiming priority based on a previous standard patent (O) application
In addition to an earlier short-term patent application, an earlier
standard patent (O) application can also serve as a basis for claiming priority
for a subsequently filed (within 12 months after the date of filing the
previous application) short-term patent application as long as—
·
the previous and the subsequent
patent applications are filed by the same applicant; or
·
the short-term patent applicant is the successor in title of
the applicant of the earlier patent application.
Claiming priority based on a previous non-HK application
Where an applicant of a short-term patent application (within 12 months after
the date of filing the previous application) seeks to claim priority of an
earlier patent application filed in or for any Paris Convention country or WTO
member country, territory or area outside Hong Kong (previous non-HK
application), a statement of priority and the supporting priority documents
(i.e. a copy of the previous non-HK application, and a copy of the certificate
issued by the authority that received the previous non-HK application and that
states the date of filing of the previous non-HK application) may be filed with
the Registrar within 16 months (non-extendible)
after the earliest date of priority
claimed provided that the statement of priority is accompanied by payment
of the official fee of HK$135 and the preparations for publication of the
short-term patent have not been completed (please refer to 7.4 below for
detail).
Claiming priority based on a previous HK application
On the other hand, if an applicant of a short-term patent application (within 12 months after
the date of filing the previous application) claims priority of an earlier
patent application filed in Hong Kong (previous HK application), the supporting
priority documents are to be regarded as having been filed timely. However, a statement of priority still
needs to be filed
within 16 months (non- extendible) after the
earliest date of priority claimed (please refer to 7.4 below for detail).
Inventions that
involve nucleotide and amino acid sequences
A short-term patent
application for an invention that involves nucleotide and amino acid sequences
must contain a sequence listing as a part of the description in the
specification.
(c) Priority claim
7.4
If I omitted to make a priority claim at the time
of filing my short-term patent application, can I add such claim to the
application afterwards? If so, how
and what is the time-limit? (s. 111 PO; s. 69 PGR)
If your short-term patent application is filed within 12 months from the
date of filing of the previous application based on which a priority claim is
made for your short-term patent application, you may still make such priority
claim within 16 months (non-extendible) after the priority date by filing the statement of priority in Patents Form OP5 and the supporting
priority documents with payment of the fee of HK$135 provided that the
preparations for publication of your applied for short-term patent have not
been completed.
7.5
If
I intended to file a short-term patent application with a priority claim, but
omitted to file such application within the 12-month priority period, can I
file the application with such priority claim afterwards? If so, how and when? (s. 110A PO; s. 68B PGR)
You may file your short-term patent application and also an application
for restoration of priority right.
The restoration application should be filed in Patents Form OP5 before the
earlier of the following—
a. within 14 months (non-extendible) from the earliest priority
date together with your short-term patent application;
b. the date on which
preparations for publication of your applied for short-term patent are
completed.
The restoration application must be accompanied by:
·
a statement of priority including the date of filing,
the application number and the country, territory or area in or for which the
previous application was made;
·
evidence to establish the reason for your failure
to file your short-term patent application with the priority claim timely
before the expiry of the original deadline and also to satisfy the Registrar
that you have taken all reasonable care required by the circumstances; and
·
the official fee of HK$405.
(d) Filing of missing
description/drawings
7.6
If I find that certain parts of the description or
drawings in the specification of my short-term patent application have not
been filed with my patent application, can I still subsequently file such
missing parts? If so, what is the
time limit to do so, and does my filing of those missing parts have any effect
on my application? (s. 114A & 114B PO; ss. 67B & 100AAB PGR)
You may file the missing description or drawings for your short-term
patent application (to which a date of filing has been accorded by the
Registrar) within 2 months (extendible, upon your request to the Registrar, for
2 months) after the date on which minimum requirement of your application is
complied with. Alternatively, the Registrar may notify you of the
requirement on filing the missing parts.
In that case, you may file the missing parts within 2 months from the
date of such notice (extendible, upon request to the Registrar, for 2 months).
Please however note that your filing of the missing description or drawings will cause a change of the accorded date
of filing of your short-term patent application to the date on which the
missing materials are filed, unless—
·
you have claimed priority of a previous application
for your short-term patent application;
·
the missing description or drawings is/are
completely contained in the previous application; and
·
you have requested that the accorded date of filing
of your short-term patent application remains unchanged; and
·
you have filed a copy of the previous application
and a statement indicating the location of the missing description or drawing in
the previous application within 16 months after the earliest date of priority
claimed (the translations of these documents should also be filed within a
certain period if they are not in one of the official languages which
you have adopted for filing your short-term patent application (see 7.7
below)).
7.7
If the previous application that contains the
missing description or drawing is not in one of the official languages either
in English or Chinese, what is the time limit for me to provide the translation?
(s. 114A PO; s. 67B, 56C & 100AAB PGR)
The time limit is the same as that for standard patent (O)
applications. Please refer to 2.9
above for the details.
(e) Observations on patent
validity
7.8
Can a third party make observations on the
patentability of an invention for which a short-term patent has been granted to
challenge the validity of the patent? (s. 126A PO; s. 79A PGR)
Any person may file with the Registrar a written notice setting out—
a.
the person’s observations on the patentability of
the invention in question after the date on which the short-term patent is
granted; and also;
b.
the grounds on which the observations are based.
The Registrar however will not entertain filing of observations
on a short-term patent in any of the following circumstances—
·
(if the patent is undergoing post-grant substantive
examination) the substantive examination has been completed;
·
the patent has expired; or
·
the patent has been found to be wholly valid by the court in any validity
proceedings.
Upon receipt of the notice containing observations on a short-term
patent, the Registrar will as soon as practicable, send a copy of the notice to
the patent proprietor.
Please note that filing a notice containing observations on a short-term
patent on its own is not a formal kind of proceedings for challenging
the validity of the patent. In
fact, a person filing such notice does not become a party to any
proceedings in relation to the short-term patent concerned. Such notice will only be considered by the
Registrar after the Registrar has been requested to conduct post-grant
substantive examination of the patent for determining the patent validity.
(f) Post-grant substantive
examination
7.9
Is substantive examination mandatory for grant of a
short-term patent? (s. 127B PO)
No. It remains the case under the new patent
system that a short-term patent is granted upon formality examination of the
patent application.
That said, the patent
proprietor or any other person having reasonable grounds or legitimate interest
may request the Registrar to conduct post-grant substantive examination of the
patent concerned for determining its validity.
7.10 Who can request the Registrar to conduct substantive examination of a
short-term patent and how to make such request? (s. 127B PO; s. 81B PGR)
A request for substantive
examination of a short-term patent may be filed with the Registrar by—
·
the patent proprietor; or
·
any other person who satisfies the Registrar that—
(i) there are reasonable grounds to suspect that the underlying invention is
not patentable; or
(ii) it would be reasonable for conducting the
examination because of the person’s legitimate business interests.
A request for substantive
examination of a short-term patent must be filed in Patents Form OP4 accompanied by payment of the official fee of
HK$4,000.
7.11 When is the proprietor of a short-term patent required to request
substantive examination of the patent? (s. 129 PO)
A short-term patent proprietor must request the Registrar to conduct substantive
examination of the patent before commencing court proceedings for enforcement
of the patent rights.
7.12 What is the time limit for requesting the Registrar to conduct
substantive examination of a short-term patent? (s. 127B PO; s. 81B PGR)
A request for substantive examination of a short-term patent may be
filed with the Registrar at any time after the patent grant. However, the Registrar will not
entertain such request concerning a short-term patent when—
·
a previous request for substantive examination of
the patent has been made and the examination outcome is still pending;
·
a certificate of substantive examination for the
patent has been issued by the Registrar as a result of a previous request for
substantive examination of the patent;
·
the patent has been revoked by the Registrar as a
result of a previous request for substantive examination of the patent; or
·
the patent has been found by the court to be wholly valid.
7.13 What requirements of a short-term patent will be examined during
substantive examination? What will
the Registrar do if the patent does not comply with any of these
requirements? (s. 127C PO)
During the substantive
examination of a short-term patent, the Registrar will mainly examine the
patent and consider any requested amendment to determine whether the patent,
together with the amendment (if allowed), complies with all of the following
requirements:
·
the
underlying invention is new, involves an inventive step, and is susceptible of
industrial application;
·
the
underlying invention does not fall within the subject matters that have
been excluded from patentability;
·
the
specification of the patent discloses the invention in a manner sufficiently
clear and complete for it to be performed by a person skilled in the art;
·
the
specification provides for not more than 2 independent claims;
·
the
claims contained in the specification define the matter for which protection is
sought or given, are clear and concise, are supported by the description in the
specification, and relate to a single inventive concept;
·
the
matter disclosed in the specification of the patent does not extend
beyond that disclosed in the patent application as filed;
·
if
the subject short-term patent is derived from a divisional application, or a
replacement application by a court order, the matter disclosed in the
specification of the subject patent does not extend beyond that
disclosed in the earlier (parent) patent application as filed;
·
the
protection conferred by the patent has not been extended by any
amendment to its specification;
·
the
patent is not one of two patents that are granted for the same invention
made by the same inventor, and that have the same date of filing or priority
date;
·
if a priority is claimed, and any prior art which is filed or published
between the claimed priority date and date of filing of the patent application
is found, the subject short-term patent is entitled to the priority right.
7.14 Under what circumstances will the Registrar raise an office action after I have requested the Registrar to conduct
substantive examination of my short-term patent? What is the time limit to respond to
such office action? (s. 127D PO; s. 81D,
81E &
100AAB PGR)
If the Registrar is of
the opinion that your short-term patent, together with any requested amendment,
does not comply with any of the examination requirements (see 7.13 above), the
Registrar will inform you by an examination notice which sets out the
Registrar's opinion and the reasons thereof.
You may respond to an examination
notice in writing to address the Registrar’s opinion by filing—
·
a
written representation to establish that your patent complies with each
unfulfilled requirement as identified by the Registrar; and/or
·
a request to amend the specification of your
patent by filing Patents Form OP7 to
enable your patent to comply with each unfulfilled requirement as identified by
the Registrar.
The time limit for you
to file your written response to the examination notice is 2 months (extendible
once by filing Patents Form SP3 for
1 month with payment of the extension fee of HK$215) after the date of the
examination notice.
Your patent will be
provisionally revoked should you fail to timely file your written response to
the examination notice.
7.15 Under what circumstances will the Registrar raise any further office
action after I have timely filed my written response to the examination
notice? What is the time limit to
respond to such further office action? (ss. 127D & 127E PO; ss. 81F, 81G & 100AAB PGR)
If the Registrar, having considered your written response to the
examination notice, is of the opinion that elaboration, revision or
clarification is required, the Registrar will inform you by a further
examination notice which sets out any matter covered in your written response
in respect of which the Registrar considers that elaboration, revision or
clarification is required.
You may respond to the further examination notice in writing to address
the Registrar’s opinion by filing—
·
a
written representation to establish that your patent complies with each
unfulfilled requirement as identified by the Registrar; and/or
·
a
request to amend the specification of your patent by filing Patents Form OP7 to
enable your patent to comply with each unfulfilled requirement as identified by
the Registrar.
The time limit for you to file your written response to the further
examination notice is 2 months (extendible once by filing Patents Form SP3 for 1 month with payment of the extension fee of
HK$215) after the date of the further examination notice.
Your patent will be provisionally revoked should you fail to timely file
your written response to the further examination notice.
7.16 What are the possible results of substantive examination of a short-term
patent? (s. 127E-127G PO)
The substantive
examination of a short-term patent will result in either—
a.
(if
the Registrar is satisfied that the patent complies with the examination
requirements) issuance of a certificate of substantive examination by the
Registrar; or
b.
(if not) revocation of the patent.
7.17 How many further examination notices will be issued by the Registrar
when conducting post-grant substantive examination of my short-term patent? (s. 127E PO; ss. 81F , 81G & 81H PGR)
While the Registrar is empowered to issue multiple further examination
notices for affording you ample opportunities to elaborate, revise or clarify
any matter covered in your response to an examination notice or a further
examination notice, the
number of further examination notices issued by the
Registrar varies from case to case.
For example, if the Registrar, having considered your written response
to the examination notice and your response to a further examination notice
(if any),
is of the opinion that your short-term patent does not comply with
the examination requirement concerned and that there is no
reasonable prospect for you to overcome the office action concerned by making
any elaboration,
revision or clarification of any matter, the Registrar will simply proceed with
making a provisional decision to revoke your short-term patent and give you a
provisional revocation notice.
7.18 What can I do if I disagree with the Registrar’s provisional decision on
revocation of my short-term patent? (s. 127D(3)(c) PO; ss. 81I &
100AAB PGR)
You may file with the
Registrar a request to review (in Patents
Form OP3) the Registrar’s provisional decision on revocation together with
the prescribed fee (HK$1,700). Your
request to review may contain the following—
·
a
written representation to establish that your patent complies with each
unfulfilled requirement as identified by the Registrar; and/or
·
a request to amend the specification of your
patent by filing Patents Form OP7 to
enable your patent to comply with each unfulfilled requirement as identified by
the Registrar.
The time limit to file
a request to review is 2 months (extendible once by filing Patents Form SP3 for 1 month with payment of the extension fee of
HK$215) after the date of the provisional revocation notice issued by the Registrar.
If you fail to timely
file a request to review the Registrar’s provisional decision on revocation
with payment of the official fee, the Registrar will make a final decision to
revoke your short-term patent and give you a final revocation notice.
7.19 Under what circumstance will the Registrar issue an office action after
I have filed a request to review the provisional revocation notice issued by
the Registrar? What is the time
limit to respond to such office action? (ss.
127D & 127E PO; ss. 81J, 81K & 100AAB PGR)
If the Registrar,
having considered your request to review, is of the opinion that your
short-term patent still does not comply with any unfulfilled examination
requirement as identified in the Registrar’s provisional revocation notice, the
Registrar will inform you by a review opinion which sets out the Registrar’s
reasons. Depending on the individual circumstances, the Registrar may also
afford you an opportunity to request a hearing so as to
address the office action.
You may respond to the
review opinion by filing—
·
a
written representation to establish that your patent complies with each
unfulfilled requirement as identified by the Registrar; and/or
·
a request to amend the specification of your
patent on Patents Form OP7 to enable
your patent to comply with each unfulfilled requirement as identified by the
Registrar.
Where the Registrar
has, in the review opinion, afforded you an opportunity to request a hearing, you may, in addition to, or as an alternative to filing your response to
the review opinion in the aforesaid manner, file a request for hearing by filing Patents Form OP6 together with payment
of the official fee of HK$1,700.
The time limit to file a written response to a review opinion issued by the
Registrar or a request for hearing (if applicable) is 2 months (extendible once
for 1 month by filing Patents Form SP3
with payment of extension fee of HK$215 before expiry of the initial time limit
– request for hearing, or within 1 month after such expiry – written response)
after the date of the review opinion.
If you fail to timely respond to a review opinion and pay the applicable
official fee (if any), the Registrar will make a final decision to revoke your
short-term patent and give you a final revocation notice.
7.20 Under what
circumstances will the Registrar raise any further office action after I have
timely responded to the review opinion?
What is the time limit to respond to such further office action? (ss. 127D & 127E PO; ss. 81L, 81M & 100AAB PGR)
If the Registrar, having considered your request to review, your written
response to the review opinion, and also having held the hearing as requested
by you (if any), is of the opinion that elaboration, revision or clarification
of any matter covered in your written response and/or the hearing (if any) is
required, the Registrar will inform you by a further review opinion which sets
out such matter. Depending on the
individual circumstances, the Registrar may also afford you an opportunity to
request a hearing.
You may respond to the further review opinion by filing—
·
a written representation to establish that your
patent complies with each unfulfilled requirement as identified by the Registrar;
and/or
·
a request to amend the specification of your patent by filing Patents
Form OP7 to enable your patent to comply with each unfulfilled requirement
as identified by the Registrar.
Where the Registrar has, in the further review opinion, afforded you an
opportunity to request a hearing, you may, in addition to, or as an alternative
to filing your response to the further review opinion in the aforesaid manner,
file a request for hearing by filing Patents
Form OP6 together with payment of the official fee of HK$1,700.
The time limit to file a written response to a further review opinion
issued by the Registrar or a request for hearing (if applicable) is 2 months
(extendible once for 1 month by filing Patents
Form SP3 with payment of extension fee of HK$215 before expiry of the
initial time limit – request for hearing, or within 1 month after such expiry –
written response) after the date of the further review opinion.
If you fail to timely respond to a further review
opinion and pay the applicable official fee (if any), the Registrar will make a
final decision to revoke your short-term patent and give you a final revocation
notice.
7.21 How many further review opinions will be issued by the Registrar when
conducting post-grant substantive examination of my short-term patent? (ss.
127E & 127G PO; ss. 81L , 81M & 81N PGR)
While the Registrar is empowered to issue multiple
further review opinions for affording you ample opportunities to elaborate,
revise or clarify any matter covered in your response to a review opinion/a
further review opinion or at the hearing as requested by you (if any), the
number of further review opinions issued by the Registrar varies from case to
case. For example, if the Registrar, having considered your request to review,
your response to the review opinion, your response to a further review opinion
(if any), and also having held the hearing as requested by you (if any), is of
the opinion that your short-term patent does not comply with the examination
requirement concerned, and that there is no reasonable prospect for you to
overcome the office action concerned by making any elaboration, revision or
clarification of any matter, the Registrar will simply proceed with making a
final decision to revoke your short-term patent and give you a final revocation
notice.
7.22 What will happen if my response to an office action raised at any stage of post-grant
substantive examination of my short-term patent has overcome such office action? (ss. 127D
& 127F PO; s. 81O PGR)
If the Registrar is of the opinion that your response to an office
action concerning an unfulfilled examination requirement in your short-term
patent has overcome such office action, the Registrar will continue to carry
out the substantive examination of your patent to ensure that your patent
complies with all examination requirements.
Where the Registrar is of the opinion that your patent does not comply
with another/other examination requirement(s) (see 7.13 above), the Registrar
will continue issuing further office action by another examination notice which
sets out the Registrar’s opinion and the reasons thereof, and afford you ample
opportunities to address such office action.
On the other hand, if the Registrar is ultimately of the opinion that
your short-term patent, together with any amendment allowed, complies with all
the examination requirements (see 7.13 above), the Registrar will issue a
certificate of substantive examination in respect of your patent.
7.23 What can I do if I disagree with the Registrar’s final decision to
revoke my short-term patent? (s. 130 PO)
You may file an appeal to the Court of First
Instance against the Registrar’s final decision to revoke your short-term
patent.
7.24 What if I have missed a deadline for responding to an office action
during substantive examination of my short-term patent (e.g. by filing a written
response to an examination notice or a further examination notice, a request to
review, a written response to a review opinion or a further review opinion)?
(s. 100AAB PGR)
You can still request a time extension for 1 month by filing Patents Form SP3 with payment of the
official fee of HK$215 within 1 month after expiry of the original deadline.
(g) Request for amendment to
patent specification
7.25 During substantive examination of a short-term patent, how does the
Registrar deal with a requested amendment to the patent specification filed in
response to an office action? Can a
third party oppose an allowable amendment? If so, how and when? (s. 127E PO; ss. 81P-81V PGR)
If the Registrar,
having regard to all examination requirements and also any response filed by a
short-term patent proprietor to overcome the unfulfilled examination
requirements as earlier identified by the Registrar, accepts the requested
amendment to the patent in whole or in part as an allowable amendment, the Registrar must publish the allowable
amendment and advertise the fact of the publication by notice in the official
journal.
Any person who intends
to oppose the allowable amendment published by the Registrar must file with the
Registrar an opposition notice in Patents
Form P2 together with payment of the official fee of HK$1,525 within 1
month (extendible for 1 month with the official fee of HK$ 215) from the date
on which the fact of the publication of the allowable amendment is advertised
by the Registrar. The opposition notice must be accompanied by a statement
setting out fully the facts on which the opponent relies and the relief sought.
7.26 Can I amend the specification of my short-term patent after I have
obtained a certificate of substantive examination concerning my patent as
issued by the Registrar? Can a
third party oppose the allowable amendment made to the specification of my
patent? If so, how and when? (ss. 46 & 103(3) PO; s. 38A PGR)
Yes, the procedure is in essence the same as that for amendment to the
specification of a granted standard patent (O). Please refer to 6.6 and 6.7 for details.
8
Other
major changes to the pre-existing patent system
8.1 Revised official fees (Schedule 2, PGR)
The major changes to
the official fees payable in relation to proceedings before the Registrar under
the new patent system are—
·
modification
of various pre-existing official fee items and their chargeable amounts
o
introduction
of preferential fees for electronic filing of patent applications to promote
filings through electronic means;
o
introduction
of the 3-tier progressive annual renewal rates for standard patents to reduce
the cost of patent renewal during the early period of patent term while
discouraging unnecessary prolongation of the ownership of those patented
inventions with little or diminishing market or exploitation value; and
·
introduction of several chargeable
official fee items and amounts for the new chargeable services provided by the
Registrar under the new patent system.
For details, please click here.
8.2 Important time limits (s. 100-100AAD, Schedule
4, PGR)
Here are certain key time limits introduced
by the new patent system for addressing office actions concerning standard patent
(O) applications and substantive examination of short-term patents—
|
Actions
to be completed |
Time limits |
Extendible? |
When to file a request for
time extension (only for those extendible time limits) |
Section Nos. of PGR |
|
Standard patent (O) applications |
||||
|
Filing a response to a deficiencies notice about
minimum requirement |
Within 2
months after the date of the notice |
No |
-- |
31V(2), Part 1 of Schedule 4 |
|
Filing a response to a
deficiencies notice about formal requirements |
Within 2
months after the date of the notice |
Yes (2 months only) |
Before
the expiry of the initial time limit |
31Y(1), 100AAB, Part 4 of Schedule 4 |
|
Filing a response to an examination notice |
Within 4
months after the date of the notice |
Yes (2 months only) |
Within 2 months after the expiry of the
initial time limit |
31ZE(1), 100AAB, Part 5 of Schedule 4 |
|
Filing a response to a further examination notice |
Within 4
months after the date of the notice |
Yes (2 months only) |
Within 2 months after the expiry of the
initial time limit |
31ZG(1), 100AAB, Part 5 of Schedule 4 |
|
Filing a request to review in response to a
provisional refusal notice |
Within 2
months after the date of the notice |
Yes (2 months only) |
Within 2 months after the expiry of the
initial time limit |
31ZI(1), 100AAB, Part 5 of Schedule 4 |
|
Filing a response to a review opinion |
Within 2
months after the date of the opinion |
Yes (2 months only) |
Within 2 months after the expiry of the
initial time limit |
31ZK(1), 100AAB, Part 5 of Schedule 4 |
|
Filing a request for hearing in response to a
review opinion (if applicable) |
Within 2
months after the date of the opinion |
Yes (2 months only) |
Before
the expiry of the initial time limit |
31ZK(2), 82(2)(a), 100AAB, Part 4 of Schedule 4 |
|
Within
2 months after the date of the
opinion |
Yes (2
months only) |
Within 2 months after the expiry of the
initial time limit |
31ZM(1),
100AAB, Part 5 of Schedule 4 |
|
|
Filing
a request for hearing in response to a further review opinion (if applicable) |
Within
2 months after the date of the
opinion |
Yes (2
months only) |
Before the expiry of the
initial time limit |
31ZM(2),
82(2)(b), 100AAB, Part 4 of Schedule 4 |
|
Post-grant
substantive examination of short-term patents |
||||
|
Filing a response to an examination notice |
Within 2
months after the date of the notice |
Yes (1 month only) |
Within 1 month after the expiry of the
initial time limit |
81E(1), 100AAB, Part 3 of Schedule 4 |
|
Filing a response to a further examination notice |
Within 2
months after the date of the notice |
Yes (1 month only) |
Within 1 month after the expiry of the
initial time limit |
81G(1), 100AAB, Part 3 of Schedule 4 |
|
Filing a request to review in response to a
provisional revocation notice |
Within 2
months after the date of the notice |
Yes (1 month only) |
Within 1 month after the expiry of the
initial time limit |
81I(1), 100AAB, Part 3 of Schedule 4 |
|
Filing a response to a review opinion |
Within 2
months after the date of the opinion |
Yes (1 month only) |
Within 1 month after the expiry of the
initial time limit |
81K(1), 100AAB, Part 3 of Schedule 4 |
|
Filing a request for hearing in response to a
review opinion (if applicable) |
Within 2
months after the date of the opinion |
Yes (1 month only) |
Before
the expiry of the initial time limit |
81K(2), 82(2)(c), 100AAB, Part 2 of Schedule 4 |
|
Filing a response to a further review opinion |
Within 2
months after the date of the opinion |
Yes (1 month only) |
Within 1 month after the expiry of the
initial time limit |
81M(1), 100AAB, Part 3 of Schedule 4 |
|
Filing a request for hearing in response to a
further review opinion (if applicable) |
Within 2
months after the date of the opinion |
Yes (1 month only) |
Before
the expiry of the initial time limit |
81M(2), 82(2)(d), 100AAB, Part 2 of Schedule 4 |
8.3
What is the regulatory measure on patent practice
under the new patent system? (s. 144A PO)
Under the new patent
system, an interim measure of regulating patent practice is introduced by prohibiting
use of the following titles/descriptions relating to qualification of provision
of patent agency services—
·
registered/certified
patent agent;
·
registered/certified
patent attorney; and
·
titles/descriptions
that may reasonably cause anyone to believe that the person using such
titles/descriptions holds a qualification which is—
(i)
specifically granted for approving such person to
provide patent agency services in Hong Kong; and
(ii)
recognized
by law or endorsed by the Government.
Use of
titles/descriptions of any qualification lawfully obtained for patent practice
elsewhere with clear indication of the jurisdiction where the qualification was
obtained is still permitted in Hong Kong.
9
Transitional
matters
(a) Payment of official fees
9.1
If the payment due date of an official fee (e.g.
renewal fee for a standard patent in 17th year of the 20-year term)
is on 16 December 2019 and the payment is made on or after 19 December 2019
(the commencement date of the new patent system), should I pay the old fee
(HK$540) or the new fee (HK$850)? (s. 39(4), PO; s. 114(2) PGR)
Generally speaking,
the payable amount of an official fee for a pre-existing service chargeable by
the Registrar (i.e. any service so chargeable before the commencement of the new
patent system on 19 December 2019) is determined by the prevailing laws when
the payment is made.
In this case, the new
renewal fee (HK$850) but not the old renewal fee (HK$540) is payable if
the payment is made on or after 19 December 2019. Should you fail to pay the renewal fee
timely before the payment due date, but still wish to renew the patent, you
have to pay the new renewal fee together with an additional official fee of
HK$270 within 6 months after the payment due date or else your patent will
cease to have effect.
(b) Short-term patent applications
9.2
Would the Registrar raise an objection to my
short-term patent application containing 2 independent claims as filed on 18
December 2019, and if so, can the objection be waived on or after 19 December
2019 in light of the relaxation of the maximum number of independent claims in
a short-term patent application effective under the new patent system? (s. 113(7A) PO & s. 114(1) PGR)
Yes, the Registrar
would raise such objection which cannot be waived. The relaxation of the maximum number of
independent claims in a short-term patent application only takes effect in
respect of short-term patent applications filed on or after 19 December 2019. Accordingly, any short-term patent
application filed before such date must comply with the pre-existing statutory
requirements by, amongst others, containing 1 independent claim only.
(c) Post-grant substantive
examination of short-term patents
9.3
If I seek to commence court proceedings under the
new patent system to enforce my unexamined short-term patent granted before 19
December 2019, do I still need to request the Registrar to conduct substantive
examination of my patent before commencing such proceedings? (s. 129 PO)
Yes, filing a request to the Registrar for substantive examination of a
pre-existing unexamined short-term patent (i.e. the one granted before 19
December 2019) is a pre-condition for commencing enforcement proceedings on or
after the said date.