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

 

Introduction. 7

1     OGP system.. 7

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?. 7

1.2      What are the main differences between a standard patent (O) and a short-term patent?  8

1.3      Why should I choose to apply for standard patent protection under the new OGP system?  8

1.4      How long does it generally take to obtain grant of a standard patent (O)?. 9

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?. 10

1.6      How long does a granted standard patent (O) stay valid?. 10

1.7      When will I need to pay the renewal fee for a standard patent (O)? (s. 39 PO; s. 32 PGR) 11

1.8      How can I apply for public funding in support of my patent application?. 11

2     Filing requirements of standard patent (O) application. 12

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) 12

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) 12

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) 13

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) 13

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) 14

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) 14

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) 15

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) 15

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) 16

3     Examination of standard patent (O) application on compliance with formal requirements  17

3.1      What is the examination on formal requirements and what are the examination requirements? (s. 37P PO; s. 31Y PGR) 17

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) 18

4     Publication of standard patent (O) application. 18

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) 19

4.2      Can I request early publication of a standard patent (O) application? (s. 37Q(2) PO) 19

5     Substantive examination of standard patent (O) application. 19

5.1      Will the Registrar initiate substantive examination of my standard patent (O) application after publication of the application?. 19

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) 20

5.3      Can I request accelerated substantive examination for my standard patent (O) application? (s. 37Q(2) PO) 20

5.4      What are the examination requirements during substantive examination of a standard patent (O) application? (s. 37U PO) 21

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) 22

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) 22

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) 23

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) 23

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) 24

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) 25

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) 26

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) 26

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) 27

6     Other matters in relation to a standard patent (O) application. 27

6.1      When should I need to file a divisional application? (ss. 37Z, 78(1)(d) & 103(1) PO; s. 31ZS PGR) 27

6.2      Can I make a voluntary amendment to a standard patent (O) application? (ss. 37ZA & 103(2) PO; s. 31ZT PGR) 28

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) 28

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) 28

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) 28

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) 29

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) 30

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) 30

7     Refinement to the pre-existing short-term patent system.. 30

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) 31

7.2      What is the new time limit for correcting the deficiencies on minimum requirement? (s. 114 PO; s. 67(2)(b) PGR) 31

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) 31

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) 33

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) 33

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) 34

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) 35

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) 35

7.9      Is substantive examination mandatory for grant of a short-term patent? (s. 127B PO) 35

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) 36

7.11    When is the proprietor of a short-term patent required to request substantive examination of the patent? (s. 129 PO) 36

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) 36

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) 37

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) 37

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) 38

7.16    What are the possible results of substantive examination of a short-term patent? (s. 127E-127G PO) 39

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) 39

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) 39

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) 40

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) 41

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) 42

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) 42

7.23    What can I do if I disagree with the Registrar’s final decision to revoke my short-term patent? (s. 130 PO) 43

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) 43

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) 43

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) 43

8     Other major changes to the pre-existing patent system.. 44

8.1      Revised official fees (Schedule 2, PGR) 44

8.2      Important time limits (s. 100-100AAD, Schedule 4, PGR) 44

8.3      What is the regulatory measure on patent practice under the new patent system? (s. 144A PO) 47

9     Transitional matters. 48

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) 48

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) 48

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) 49

 

 

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 1

 

Example 2:

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

Filing a response to a further 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

 

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.