1. Overview
Hong Kong’s patent system in 2013 provides standard patents and short-term patents. The Patents Registry of the Intellectual Property Department handles registration. Although the Patents Ordinance sets requirements such as novelty and inventive step, the Department examines formalities rather than conducting substantive examination of those requirements before grant.
This may raise questions about enforcement when infringement occurs or validity is challenged, particularly for standard patents, whose requirements resemble those for invention patents in mainland China.
A standard patent is based on a patent granted by a designated patent office: SIPO in mainland China, the European Patent Office in respect of a patent designating the United Kingdom, or the United Kingdom Patent Office. For example, the applicant may seek registration and grant in Hong Kong based on a patent granted by SIPO. The corresponding standard patent has the same scope of protection as the designated patent.
2. What happens if the designated patent is revoked?
If the designated patent is wholly or partly revoked in opposition or revocation proceedings, the validity of the corresponding Hong Kong standard patent becomes an issue.
Patent protection in Hong Kong is independent. Revocation elsewhere does not, by itself, automatically remove the corresponding Hong Kong right. Nevertheless, the revocation may indicate that the standard patent fails the novelty, inventive-step or other requirements of the Patents Ordinance. New prior art may also emerge that challenges validity. The Ordinance provides revocation and post-grant amendment procedures for these situations.
2.1 Revocation procedures
There are two principal routes.
(1) Where the designated patent has been revoked in the prescribed opposition or revocation proceedings, a person may apply to the Registrar or the court to revoke the corresponding standard patent and supply the required documentation, including evidence of the effective revocation decision. The Registrar may make a revocation order or refer the application to the court.
(2) At any time after grant, a person may apply to the court for revocation of a standard patent and submit supporting evidence. The court determines whether the patent should be revoked.
2.2 Post-grant amendment
Three principal situations arise.
(1) If the designated patent’s specification is amended following the prescribed opposition or revocation proceedings, the standard patent’s proprietor must submit the corresponding amendment documents to the Registrar within the prescribed period. The period is six months from the amendment in the designated office or the grant of the Hong Kong standard patent, whichever is later. The Registrar processes the amendment under the applicable requirements.
(2) At any time after grant, the proprietor may apply to the court to amend the standard patent’s specification. The court decides whether to allow the amendment.
(3) In court proceedings in which the standard patent’s validity is at issue, such as infringement or revocation proceedings, the proprietor may request an amendment, subject to the court’s decision.
3. Analysis and practical response
Although a standard patent does not undergo substantive examination in Hong Kong before grant under this system, its validity may be considered by the court in post-grant proceedings.
The proprietor should periodically review the designated patent’s status, newly discovered prior art and protection needs to assess whether amendment is appropriate. In particular, where prescribed proceedings have amended the designated patent, the corresponding filing should be made promptly within the six-month period described above.
For example, the proprietor can make corresponding changes following amendment of the designated patent in opposition or revocation proceedings. An application to amend may also be appropriate when a newly discovered publication affects novelty or inventive step, or when the existing scope is unsuitable for the proprietor’s protection needs. Appropriate post-grant amendment can make the right more stable and improve its effectiveness in infringement and revocation proceedings.
