Hong Kong Patents – Practical Issues To Be Considered

Author:Mr Toby Mak
Profession:Toby Mak

The Hong Kong patent system is essentially a re-registration patent system. Although Hong Kong is not a favourable forum for patent litigation, having a patent granted in Hong Kong could provide the patentee with substantial commercial advantages. At the very least, Hong Kong has a population of almost 8 million people, which is higher than that of some European countries.

However, there are a number of issues that one could consider for the following questions:

How can I obtain enforceable patent rights earlier for my invention in Hong Kong? I have UK, EP, and CN applications directed to the same invention. Which one should I choose to pursue a Hong Kong standard patent? Why? My UK, EP, and CN patents will all be granted. Can I choose the one with the broadest scope for Hong Kong? This article seeks to provide general guidance to the answers of the above questions. But first let us have a brief review of the Hong Kong patent system.

Hong Kong patent rights must be pursued separately from China

First of all, one should note that due to the 'One Country, Two Country' systems, a Chinese patent has no effect in Hong Kong, and vice versa.

Types of Hong Kong patents

Hong Kong standard patent

A Hong Kong standard patent is obtained through a two-stage application process. The first stage requires the filing of a request to record a pending application in the United Kingdom, Europe (UK) or China (a designated application). In another words, an application in Hong Kong for a standard patent cannot be filed if there is no application for a patent in the UK, EP (UK) or CN.

The second stage of the filing of a request for registration and grant in Hong Kong can only be filed when the UK, EP(UK) or CN application, on which the Hong Kong standard is based, is granted (the designated patent). However, the designated patent utilized in the second stage must correspond to the designated application in the first stage. For example, if a UK designated application is utilized in the first stage, one cannot utilize the CN designated patent in the second stage, even if both are directed to the same invention. The term of a Hong Kong standard patent is 20 years from the filing date of the basic UK/EP(UK)/CN designated application. For the ease of discussion, a Hong Kong standard patent based on a Chinese patent will be termed 'CN-based Hong Kong patent' below. Similarly, 'UK-based Hong Kong application' refers to a Hong Kong standard patent application based on a UK patent application, and so on.

Hong Kong short-term patent

Other than a Hong Kong standard patent, one may file an application for...

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