Published by Robert Games on 12th December 2010
It is beneficial to consider patent protection in Hong Kong, since it is a major port for export to the West.
Hong Kong has a patent registration system which effectively allows extension of a patent application and then a granted patent in Britain, Europe or China to Hong Kong. This extension procedure is very cost-effective, since no novelty or inventive step search and examination is undertaken. This Standard Patent registration in Hong Kong lasts as long as the parent patent is in force and providing renewal fees are paid.
However, it is a lesser known fact that a Short-Term Patent, which lasts initially for four years and which is extendable for another four years after that, is also available in Hong Kong as a direct filing and can be granted within a very short time frame. This may be highly beneficial in a fast moving field of technology where it may not be worth the time and expense seeking longer lasting intellectual property (“IP”) rights.
There are two ways to obtain the Short-Term Patent in Hong Kong. The most straight forward route is by directly submitting a standalone patent application. Alternatively, a Short-Term Patent application in Hong Kong can be filed after the entry of the Chinese National Phase of an International Patent Application (“PCT”).
In the latter case, the deadline for filing in such a manner is within six months after the entry into the Chinese National Phase of the PCT.
Interestingly, the applicant may be provided with a second opportunity to file a Hong Kong Short-Term Patent application based on the entry of the Chinese National Phase of a PCT, if at the time of filing of the PCT national phase a decision cannot be made as to whether a Hong Kong Short-Term Patent should be undertaken. In this case, the Hong Kong Short-Term Patent application can be filed within six months after the date of issuance of an official notice of the Chinese National Phase Application by the China State Intellectual Property Office (“SIPO”).
There is no search or substantive examination for a Hong Kong Short-Term Patent application. As such, an application can mature to grant within a few months from the date of filing and therefore enables the proprietor to enforce his or her patent rights in Hong Kong within a short space of time.
This can be particularly useful if there are any concerns over infringing activities noted during the International phase of the PCT or, as is quite common, if investment in the invention is dependent upon grant of the first patent anywhere in the world.
Upon grant, the Short-Term Hong Kong Patent is valid for an initial four year period, from the date of filing, and is then renewable for another final four years. Should there be a need to secure longer term protection after the filing of a Hong Kong Short-Term Patent application, a Standard Patent Application can be applied for. As mentioned above, a Standard Patent Application can be filed within six months of the date of publication of a designated UK, European or Chinese patent application.