LCQ5: Patent system in Hong Kong
Following is a reply by the Acting Secretary for Commerce and Economic Development, Mr Gregory So, to a question by Dr Hon Pan Pey-chyou in the Legislative Council today (May 11):
Last year, I received a complaint from a small business proprietor alleging that he had submitted a patent application for his product in Hong Kong but had not obtained any effective protection, and the application procedures were cumbersome, and that Hong Kong lacks fair procedures for vetting patent products. In this connection, will the Government inform this Council:
(a) given that under the existing Patents Ordinance, any member of the public who wants to submit a patent application for an invention in Hong Kong will first need to obtain the patent granted by one of the designated patent offices outside Hong Kong or submit a search report prepared by a designated searching authority, whether the authorities had, in the past three years, considered reviewing and revising the patent registration procedures under the Ordinance, such as introducing the "original grant patent system", so as to dovetail with the unique features of local industries and foster the development of creative industries in Hong Kong; if they had, of the details; if not, the reasons for that;
(b) given that a number of economies such as the Mainland, Taiwan, Japan and Europe currently adopts "utility model patents" and give full authority to patent organisations or patent courts to vet and review patent rights, whether the authorities will consider introducing such system; if they will not, of the reasons; if they will, of the details; whether they will allocate additional resources to implement this plan; if they will, of the details; if not, the reasons for that; and
(c) whether the authorities will provide legal assistance to Hong Kong's small and medium enterprises in respect of the vetting procedures for patent rights and in the event of patent disputes so that they will not lose the opportunity of having fair arbitration due to huge arbitration costs; if they will, of the details, if not, the reasons for that?
Insofar as the processing of patent applications is concerned, if a patent office were to conduct substantive examination, the relevant authority would have to establish a sizeable databank and employ professional experts from various fields before it is in a position to examine whether a certain invention is novel, innovative and susceptible to industrial application.
The patent system currently prevailing in Hong Kong was established in June 1997. Mainly due to considerations surrounding cost effectiveness, the law does not require the patent authority to conduct substantive examination locally.
Our system is such that the Hong Kong Patents Registry merely conducts formality checking, namely verifying the documents submitted by the applicant to see whether the necessary information has been fully furnished, for the purpose of determining whether the registration requirements are met. Under the current system, two types of patents are granted in Hong Kong, namely standard patents and short-term patents.
Standard patents obtained in Hong Kong are based on a patent granted by one of three "designated patent offices". All these three "designated patent offices" have adopted the "original grant patent system". They are the State Intellectual Property Office, the United Kingdom Patent Office and the European Patent Office (in respect of patents designating the United Kingdom). The application process involves two stages. After the "designated patent office" has published the patent application, the applicant may, within the prescribed period, file a "request to record" in Hong Kong. After the "designated patent office" has conducted substantive examination and granted the patent, the applicant may, within the prescribed period, file a "request for registration and grant" in Hong Kong. The Hong Kong Patents Registry would normally grant the patent within a few months after receiving the relevant certifying document from the "designated patent office". A standard patent may remain in force for a maximum term of 20 years.
As for a short-term patent, the applicant may file his application direct with the Hong Kong Patents Registry without having to first go through a "designated patent office". The applicant is required to submit a search report prepared either by one of the "designated patent offices" or any International Searching Authority appointed pursuant to Article 16 of the Patent Co-operation Treaty. The Hong Kong Patents Registry would grant the short-term patent after satisfying itself that the information required is fully furnished. The registration process could generally be completed within a few months. A short-term patent may remain in force for a maximum term of eight years.
As "substantive examination" is not a prerequisite for processing an application, the grant of a short-term patent cannot be regarded as proof of the patentability of the applicant's invention. A patent proprietor would have to prove the validity of his/her patent in court proceedings when enforcing the patent. Furthermore, if any person applies to the court for an order to revoke a short-term patent on the ground that the invention is not patentable, the patent proprietor will have to adduce evidence to prove the validity of his/her patent in the relevant court proceedings.
With regard to parts (a) to (c) of the question, our reply is as follows:
(a) We are about to launch a forward-looking review this year, with a view to ensuring that our patent system will effectively complement the future development of Hong Kong's economy on various fronts including innovation and technology.
We will listen carefully to proposals and views from all relevant sectors before deciding on whether and if so how the current system, including the granting of patent, should be changed.
To collect preliminary opinions from major stakeholders, we held a public forum in February this year. About 170 representatives from the legal, patent agent, industrial, academic and research-and-development sectors attended the Forum. At the forum, some participants suggested that Hong Kong should consider having its own "original grant patent system" with substantive examination outsourced to the patent office(s) in other jurisdiction(s), thereby allowing inventors and investors to apply for standard patents direct in Hong Kong. We will include this subject into the ambit of the review.
At the meeting of the Legislative Council Panel on Commerce and Industry on May 17, we will seek Members' views on how to take forward this review of our patent system, including its scope and the work plan.
(b) The short-term patent system in Hong Kong shares a number of similarities with the "utility model" or "lesser patent" systems in use in some overseas jurisdictions (including Mainland China, Australia and some European countries). For example, the protection period is shorter than that offered by standard patents (normally eight to 10 years) and the patent offices or registries will not require substantive examination to be conducted before granting the patent.
Should a dispute arise after a short-term patent or a "lesser patent" has been granted, it is generally for the local court to determine the validity of the patent.
Nevertheless, we also note that in some jurisdictions, holders of lesser patents or other parties who have doubts about the validity of the lesser patents may choose to request the relevant administrative department to conduct a substantive examination of the invention in question. Such a practice, by enabling the relevant parties to better ascertain patentability through scrutiny of the examination report, may help avoid unnecessary litigations.
In conducting the review exercise described above, we will consider the merits of introducing a similar mechanism.
(c) To assist local companies and individuals in applying for patents, the Innovation and Technology Commission has launched a patent application funding scheme. Eligible applicants for the scheme include local incorporated companies, Hong Kong permanent residents and Hong Kong residents who are permitted to remain in Hong Kong for not less than seven years as long as they have not previously owned any patent in any country or territory. The maximum grant is $150,000 for each approved application. Out of the grant, an amount of not more than $120,000 may be used for patent-search-cum-technical assessment and other direct costs involved in the patent application process, for example, attorney fees, consultant fees (including charges incurred in dealing with objections raised by the relevant examination authority during the patent examination process) and fees relating to the filing of patent applications. The fund could not be used to cover fees incurred in handling disputes that arise after the relevant patent has been granted.
Where the patent has been granted, should a patent owner be involved in a dispute or legal challenge involving the patent, he/she may apply for legal aid for pursuing proceedings in the District Court, the Court of First Instance, the Court of Appeal and the Court of Final Appeal. Provided that the applicant’s personal financial position meets the statutory criteria and that reasonable grounds exist for taking forward or defending the relevant legal proceedings, legal aid may be granted.
Wednesday, May 11, 2011