Remedies for missed deadlines in Hong Kong standard patent registration

1. Overview of the standard patent system

Hong Kong's standard patent system provides for a patent to be granted, without substantive examination in Hong Kong, on the basis of a patent granted by a designated patent office. The designated offices are the State Intellectual Property Office of China (SIPO), the European Patent Office for a patent designating the United Kingdom, and the United Kingdom Patent Office.

The procedure consists of two stages, each subject to a statutory deadline. At stage one, a request to record must be filed in Hong Kong within six months after publication of the designated patent application. At stage two, a request for registration and grant must be filed within six months after grant of the designated patent or publication of the request to record in Hong Kong, whichever is later.

If either statutory period is missed, an extension or restoration request is not available. Nevertheless, the following alternatives may provide a remedy.

2. Alternatives after a missed deadline

If the stage-one request to record was not filed on time, first check whether there is a Chinese, European or UK family application corresponding to the designated application and whether fewer than six months have elapsed since that family application's publication. If so, use it as a new designated application and complete both stages within the applicable time limits.

If no suitable family application is available, a divisional application may be filed with the designated patent office. The divisional application can then serve as the new designated application, with requests to record and for registration and grant filed within its own stage-one and stage-two periods.

If the stage-two request for registration and grant was not filed on time, check whether a Chinese, European or UK family application has been published within the preceding six months. If it has, that application may be used as a new designated application, and both stages can be completed within the relevant periods. If not, no satisfactory remedy is available under the route illustrated in the original article.

By the time the first designated patent has been granted, more than six months have usually elapsed since publication of its Chinese, European or UK family applications. Relief after missing the second-stage deadline is therefore possible only in a limited number of cases.

For example, the first designated application may be the priority application for an international application that subsequently enters the Chinese, European or UK national or regional phase. Even if the stage-two period for the first designated patent has expired, fewer than six months may have elapsed since publication of that corresponding national or regional application. It can then serve as a new designated application, with a request to record filed within six months of its publication.

Because remedies after a missed stage-two deadline are difficult, applicants seeking a Hong Kong standard patent should monitor the relevant deadlines carefully.