The Original Grant Patent System for Standard Patents in Hong Kong's New Patent System

1. Patent System before Change

Hong Kong's new patent system came into effect on December 19, 2019. Prior to this, patents in Hong Kong were divided into two categories: standard patents and short-term patents.

Standard patent: An application for a standard patent for an invention must be made on the basis of a corresponding patent application already filed in Mainland China, the United Kingdom or the European Patent Office and must be filed in Hong Kong on time (hereinafter referred to as "re-registration standard patent").

Short-term patent: An application for a short-term patent for an invention is a patent application that can be filed directly in Hong Kong and is subject only to formal examination and only one independent claim is allowed under each application.

2. Addition of Original Grant Patent System for Standard Patents

Under the new patent system, in addition to the existing re-registration standard patents and short-term patents, patent applicants may also seek protection for their inventions in Hong Kong through another route, i.e., the original grant patent system for standard patents. Under the original grant patent system for standard patents, the applicant will directly file an application in Hong Kong and the Patent Registry will conduct substantive examination of the original grant patent application in addition to a formal examination to determine whether or not the claimed invention of the application meets the patentability requirements.

The process of application for an original grant patent in Hong Kong is as follows:

・The original grant patent application, if satisfying the formal requirements after formal examination, will be published 18 months after the earliest filing date.

・The original grant patent application will be subject to substantive examination only upon request by the applicant. The time limit for the applicant to submit a request for substantive examination is 3 years from the earliest filing date.

・When the Patents Registry, after substantive examination of the original grant patent application, holds that the application failed to meet a certain requirement for examination, it will issue one or more office actions to the applicant and the applicant shall submit a written response within four months from the date of each notification.

・When the Patent Registry still holds that the original grant patent application still failed to meet the requirements for examination after the applicant has responded in writing, it will issue a provisional refusal notice.

・The applicant shall submit a request to review within 2 months after receipt of the provisional refusal notice. During the review process, the applicant shall reply, in written form, to the review opinion issued by the Patent Registry and respond by accepting the hearing opportunities.

・If, after consideration to the applicant's written response to the review opinion and the notification of reexamination, the Patent Registry holds that the application still did not meet the requirements for examination, it will issue final refusal notice..

・If, after substantive examination, the Patents Registry holds that the application met all the requirements for examination, it will give a notification to the applicant of the date on which the grant of the patent application will be published and publish the grant of the patent application within that date. Also a certificate of grant of such patent will be issued to the applicant.

・As can be seen from the above process, just like invention patents in many countries, the original grant patent applications in Hong Kong are also subject to substantive examination. The Patent Registry will issue office actions. If the applicant is still not accepted after the reply, the Patent Registry will issue a provisional refusal notice (similar to the final OA in the United States). The applicant is required to request of review and pay the prescribed fee. The Patent Registry will issue a review opinion during the reexamination process and give the applicant the opportunity to hearing. The review procedure is similar to the RCE procedure in the United States.

The newly-added original grant patent system will save the cost and time required for obtaining a standard patent and increase the flexibility of patenting by providing an alternative route to apply for a standard patent in Hong Kong, thereby providing patent applicants with the opportunity to choose the best patenting strategy.