Standard Patents, short-term patents and designs may be registered in Hong Kong.
Under the new patent law from June 27, 1997, there are now two types of patents: standard patents and short-term patents.
These are patents which can only be granted on the basis of a patent granted in a designated patent office. To obtain a standard patent the applicant must first file a patent application with a designated patent office, which are:
- The Chinese Patent Office
- The United Kingdom Patent Office
- The European Patent Office (for applications and patents designating the United Kingdom)
The official procedure for filing this "designated patent application" has two stages.
a. Request to record application: First, a request must be made for the recordal of the designated patent application in Hong Kong, which must be made within six months from the publication of the designated patent application. If the request to record has been given a filing date and the required fees have been paid, examination of compliance of the formal requirements will be made. If any deficiencies are found the applicant will be given one month in which to remedy the defects. If the formal requirements are all in compliance, then the designated patent application will be recorded and the particulars of the request to record entered into the Register, the request to record made public, and a notice of this publication advertised in the Government Gazette.
b. Registration and Grant: Within six months from the date of grant of a patent, a request for registration of the designated patent and for grant of a standard patent for the invention shown in the published specification of the designated patent must be filed. A filing fee and an advertisement fee are due on filing the request. Once the request for registration and grant has been given a filing date the Registrar will check that all formal requirements have been complied with (the applicant will be given two months to correct any deficiencies), and if the request is found to be in compliance, the designated patent will be registered and a standard patent for the invention granted; a certificate of the standard patent will be issued and a notice of grant advertised in the Gazette.
- Filing Requirements : Standard Patent
Documents required for filing a standard patent must be filed in English or Chinese. The language in which the application is filed will be the language in which all future proceedings will be conducted.
Documents required include:
- Request to record the application on prescribed form.
- Two photocopies of the designated patent application as published (certified copy not required), including description, claims, drawings, search report or abstract as published with the application.
- Abstract of the invention in both English and Chinese language.
- In the case of the person making a request not being the same as the applicant in the designated application, Deed of Assignment and statement explaining the right of that person to apply for the standard patent must be included.
- List of documents filed.
- Payment of the required filing fee and advertisement fee (to be paid within one month from filing).
These are patents which have a duration of 8 years maximum from the filing date, which may be granted after a formal examination, however do not require examination of novelty, inventive step and industrial applicability. However, a novelty search report must be filed with such an application, and the application may be refused if the Examiner considers it to be contrary to public order or morality. Moreover, short-term patents are applied for directly with the Hong Kong Intellectual Property Office, and in this sense differ from the standard patent, which require a designated patent application. The required level of inventiveness for a short-term patent is the same as that of a standard patent.
- An application for registration must be filed on the specified form.
- If there appears to be a deficiency in the filing of the application or in complying, then the Registrar will send a notice to the applicant to correct the deficiencies. The applicant will have one month in which to reply.
- If the application is in order, the Registrar will examine whether the application meets the requirements for registration. If it does not, the Registrar will notify the applicant in writing who will be given two months from the date of the notice to respond to the Registrar's notification. A further extension of two months may also be made providing the request is made before expiration of the extended period and required fees paid.
- Registration: If the formal requirements are complied with, the Registrar will grant a short-term patent. After grant the details of the specification and patent owner and inventor will be made public, a certificate of grant issued, and a notice of the grant advertised in the Government Gazette.
- Filing Requirements : Short-Term Patent
- Request for the grant of a short-term patent on prescribed form.
- Description in English or Chinese (two copies).
- Claim/s in English or Chinese (two copies).
- Drawings (two sets). The drawings must be made on clean white matt durable A4 paper. The mimimum margins are: top 2.5 cm, left side 2.5 cm, right side 1.5 cm and bottom 1 cm.
- Abstract in English and Chinese (should not be more than 150 English words or 200 Chinese characters).
- If applicant is not the inventor, statement indicating the derivation of applicant's entitlement to the invention (copies for Registrar and the number of inventors).
- Search report from the Chinese Patent Office, the United Kingdom Patent Office, the European Patent Office, or an Authority under Article 16 of the PCT.
To obtain design protection in Hong Kong, an application for design registration must be filed with the Designs Registry of the Intellectual Property Department in Hong Kong. A design is defined as the features of shape, configuration, pattern, or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye.
- An application for registration must be filed on the specified form.
- If there appears to be a deficiency in the filing of the application or in complying, then the Registrar will send a notice to the applicant to correct the deficiencies.
- If the application is in order, the Registrar will examine whether the application meets the requirements for registration. If it does not, the Registrar will notify the applicant in writing who will be given three months from the date of the notice to respond to the Registrar's notification.
- Registration: If the formal requirements are complied with, the design will then be registered in the Register of Designs, the registration and a representation of the design published in the Government Gazette, and a certificate of registration issued.
- Filing Requirements : Designs
- Application on prescribed form (which may be signed by agent) in both Chinese and English.
- Seven identical sets of rectangular representations of the design(s) (this may also include drawings or photographs). Drawings must be on sheets of international size A4; the maximum size of photographs is 160mm x 160mm. Statement of novelty must be printed on the top sheet of each set of representations.
- If priority is claimed, a certified copy of the application whose priority is claimed must be filed with the application. The certified English or Chinese translation (if required) must be filed on filing the application or within three months of filing the application.
- If applicant is not the designer, statement explaining applicant's rights and deed of assignment in English or Chinese.
- If the design includes official insignia, names or emblems of any country, city, town or place, or a name or portrait of a living person, evidence must be filed of the consent of the competent authority or person.
- Samples and specimens: In case of an application for the registration of a two-dimensional design, its dimensions may not exceed 30 cm nor weigh more than 4kg.
- Payment of the required application fees and advertisement fee.
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