Trademark applications are the responsibility of the Intellectual Property Department of Hong Kong.
Filing Requirements : Trademarks and Service Marks
The documents required for filing include:
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:
Procedure
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:
Short-term Patent
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.
Procedure
Filing Requirements : Short-Term Patent
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.
Procedure
Filing Requirements : Designs
Standard patent: An application may be filed by the applicant in the designated patent application or his/her successor in title (e.g. an Assignee), but if another person is entitled to ownership in Hong Kong, that person can apply.
Short-term patent: An application may be filed by any person, either alone or jointly.The right to apply for a standard patent belongs to the inventor(s) or his successor in title (e.g. Assignee).
Ten years starting from the approval of the application. It should be renewed prior to six months before its expiration.
Once a trademark is accepted for registration it is published in the Hong Kong Intellectual Property Journal, and anyone can lodge an opposition to the mark within three months of publication of this notice.
Upon receipt of an opposition, the applicant will be notified of the opposition. The applicant may respond by filing a counter-statement. Both parties are given a prescribed time period in which to file evidence in support of the application and opposition. When all evidence has been received, the Registrar of Trademarks will set a time for a hearing to take place, and at the conclusion of the hearing will then make a decision.
Yes, even if you do not immediately use the trademark, you may register provided that the same or similar trademark has not already been registered, and your mark satisfies the other necessary requirements. Then you will have all rights in the trademark, even if somebody subsequently attempts to use it before you are ready to use. However, the trademark must be used within three years. If you have not used the mark for three (3) consecutive years after the registration without any justified reason, any party may request to cancel the trademark.
If you have lodged another trademark application in a member country in the Paris Convention and within six months lodge an application in Hong Kong your application will be given priority, provided that on your application you write down your prior application number, date and time of lodge, and name of the country. The Registrar may at any time require the applicant to file a certificate of priority issued by the registering authority of the country in which the corresponding mark has been registered.
If you have not lodged any trademark application in any member country in the Paris Convention, you need to submit proofs that you are actually using that trademark.
Registration of a trademark requires payment of a registration fee, after which the Registrar of Trademarks will enter details of the trademark into the trademarks register and the owner issued with a certificate of registration. Notice of the registration will be published in the official journal.
Trademarks can be freely assigned with or without the goodwill of the business, and for all or some of the goods or services for which it is registered. In case of assignment without the goodwill, it is now no longer necessary to advertise the assignment. In addition, associated trademarks are no longer required to be assigned together; they can now be assigned independently.
An assignment is to be registered in order to be effective against third parties. Documents required are: 1. Request for registration, signed by agent or assignee. 2. Deed of assignment, signed by both assignor and assignee. 3. Power of attorney from assignee.
Trademark registration is effective from the date of authorization, lasting for ten years, counting from the approval of the application. It is renewable for ten years at a time, and must be renewed prior to six months before its expiration.
Yes. You may request to divide your application after it has been given a filing date and before it is registered.
Standard patent: An application may be filed by the applicant in the designated patent application or his/her successor in title (e.g. an Assignee), but if another person is entitled to ownership in Hong Kong, that person can apply.
Short-term patent: An application may be filed by any person, either alone or jointly.The right to apply for a standard patent belongs to the inventor(s) or his successor in title (e.g. Assignee).
Standard patents are not independent, in that they can only be granted on the basis of a patent granted in a designated patent office. So, a previous patent application must be already filed in the following designated patent offices: Chinese Patent Office, the U.K. Patent Office and the European Patent Office. In addition, the duration of a standard patent is 20 years from the filing date, with no extension.
However, short-term patents are applied for directly with the Hong Kong Patents Registry and are independent of patents or patent applications in other countries. A short-term patent has different examination procedures from that of a standard patent; and its duration is four years from the date of filing, renewable once with a further four year period, and no extension.
Standard patents are not independent, in that they can only be granted on the basis of a patent granted in a designated patent office. So, a previous patent application must be already filed in the following designated patent offices: Chinese Patent Office, the U.K. Patent Office and the European Patent Office. In addition, the duration of a standard patent is 20 years from the filing date, with no extension.
However, short-term patents are applied for directly with the Hong Kong Patents Registry and are independent of patents or patent applications in other countries. A short-term patent has different examination procedures from that of a standard patent; and its duration is four years from the date of filing, renewable once with a further four year period, and no extension.
"Inventions" are patentable. An invention must be useful and susceptible of industrial application, novel and involve an inventive step compared to the closest prior art. Its inventive step must not be obvious to a person skilled in the art.
Discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules or ways of performing mental acts, games or doing business; computer programs; the presentation of information; methods of treatment of the human body by surgery or therapy; anything considered by the Registrar to be contrary to public order.
The patent will be granted to whichever party files the first patent application, regardless of who made the invention first. It is therefore important not to delay filing a patent application.
If possible, it is best to conduct a search before applying for a patent. If the invention has been disclosed elsewhere, then the invention may not be patentable. The search will determine whether patents or publications disclosing the invention exist.
As the cost of a search is generally far less than the cost of a patent application, a search is a relatively inexpensive method for an inventor to decide wheher to spend a larger amount on a patent application.
Searches can take considerable time, however, which some inventors may not have. Moreover, it must be remembered that no search can absolutely determine the pantentability of any invention. Search results are merely a useful guide in deciding whether an invention may be worth patenting.
It is safest to keep your invention strictly confidential, at least until you file a patent application. If your invention is disclosed in any publication anywhere in the world, and more than six months passes, the invention is no longer patentable.
If you have disclosed your invention, and wish to file a patent application, then the date of disclosure should be specifically stated in the application at the time of filing and the relevant document should be submitted within 30 days of the filing date.
If the examination finds that the patent cannot be accepted, then an examination report will be sent to the applicant, who will be notified to reply to the objections within two months. The applicant¡¦s reply should remove doubts and lead the Registrar to conclude that the patent should be granted and published in the Government Gazette. If the applicant fails to convince the Registrar then the Registrar will propose that the patent be rejected, and this result will also be published. Appeal then may be lodged with the High Court, and further appeal to the Court of Appeal.
Standard Patent* protection: 20 years from the date of application
Short-term Patent protection: 4 years from the date of application; renewable once with a further four year period.
Designs: Initial term of five years from the date of application; renewable for four terms of five years each. Application for renewal is to be made the renewal fee paid during the last three months of a five-year period.
* The owner of a standard patent must exploit it. If no use occurs for three consecutive years without just cause, a compulsory license may be issued in some cases.
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