Ming & Sure Intellectual Property Law Firm

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How to File a Patent Application in Hong Kong

Hong Kong, as a Special Administrative Region of China, has its own patent system under the Patent Act and Registered Design Act. A patent granted in mainland China will not automatically take effect in Hong Kong. In order to obtain protection in Hong Kong, separate registration procedures must be gone through in pursuance with the law.

1. Types of Patents granted in Hong Kong There are three types of patent in the HKSAR, standard patent, short-term patent and design patent.

2. Patent Terms in Hong Kong

Type of Patent Term in Years Standard Patent 20

Short-Term Patent 4 Design Patent 5

* Short-term patents are renewable after four years from filing, for a maximum term of eight years, and design patents are renewable for four times after five years from filing for a maximum term of twenty-five years.

3. Recordation and Registration of Standard Patents

Only patents/patent applications filed at designated national or regional patent offices can be registered as Hong Kong standard patents. The designated patent offices include the State Intellectual Property Office (SIPO) of China, the United Kingdom Intellectual Property Office (UK IPO) and the European Patent Office (EPO). Chinese invention patents may be registered as standard patents in Hong Kong. The standard procedure for the patent registration is divided into two stages:

Stage I: Request to Record a Patent Application

Within six months from publication of a patent application in one of the three designated offices of

CN, UK, or EPO designating UK, the applicant should file a request to record the patent application

to the Patent Registry (the “Registry”) of the Government of the Hong Kong Special Administrative

Region. The patent application, after an examination in formality, will be recorded in Register of

Patents and published by notice in the Hong Kong Intellectual Property Journal.

Stage II: Request for Registration and Grant in Hong Kong

Within six months after the date of grant of the patent (designated patent). After Formality

Examination, the applicant should file

a request for registration and grant, and the patent application will be recorded in Register of

Patents and granted and published by notice in the Hong Kong Intellectual Property Journal.

The 20-year patent term is counted from the application date given by the designated patent office (e.g. SIPO), while the patent rights take effect from the date of publication in the Hong Kong Intellectual Property Journal.

4. Filing a Short-Term Patent in Hong Kong

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Inventions of products and processes may be patented in Hong Kong as short-term patents. In general, there is no restriction on when a short-term patent application should be filed in Hong Kong. However, if the applicant wishes to claim the priority from an earliest application in a member country under the Paris Convention or a member territory of the World Trade Organization, he/she is required to file a short-term patent application in Hong Kong within 12 months after filing the earliest application. The Hong Kong Patents Registry only conducts formality examination on short-term patent applications. When filing a short-term patent, the applicant(s) should submit a relevant search report provided by one of the prescribed searching authorities, in Austria, Australia, Japan, Russia, Sweden, USA and the European Patent Office, together with the application documents.

5. Standard Patent and Short-Term Patent Based on PCT Application Standard patents and short-term patents in Hong Kong can also be obtained via the PCT route, if China (PRC) is one of the designated countries.

(I) For registration of a standard patent in Hong Kong based on a PCT application, the above two-stage system applies. In addition, please note the following:

i. If the International Bureau published the international application in Chinese, the applicant should file a request to record in Hong Kong within six months after SIPO issues a Notification of the National Application Number;

ii. If the international application was published in a language other than Chinese, the applicant should file a request to record in Hong Kong within six months from the date of publication of the international application by SIPO.

Similarly, a request for Registration should be filed within six months after the grant.

(II) The applicant may only file a short-term patent application based on a PCT application entering China as a utility-model patent and the patent application has entered its national phase.

The applicant should file a short-term patent registration in Hong Kong within six months after the international application enters the Chinese national stage or within six months after SIPO issues the Notification of the National Application Number.

6. Filing a Design Patent in Hong Kong Hong Kong has an independent law system for industrial design protection. A design patent must be applicable to an industry product. A single application may contain a plurality of industrial designs.

In general, there is no restriction on when a design patent application should be filed in Hong Kong. However, if the applicant wishes to claim the priority from an earliest application in a member country under the Paris Convention or a member territory of the World Trade Organization, he/she is required to file a design patent application in Hong Kong within 6 months after filing the earliest application. The Industrial Design Registration Department of the Registry conducts formality examination on the application, which will be registered and published after being granted by the Registry.

For more information or details, please contact us at mail@mingsure.com.