Issues regarding Hong Kong standard patent application and its registration procedure

Hong Kong standard patent is a patent application that is extended and registered in Hong Kong based on a patent application filed in one of Chinese National Intellectual Property Administration (CNIPA), the European Patent Office (EPO) (UK is required to be designated) or the United Kingdom Intellectual Property Office (UKIPO), so it is also referred as Hong Kong patent extension. The patent applications filed in CNIPA, EPO or Britain are also referred as designated patents. Herein, based on our practical experiences of many years, we have sorted out several common questions in the application process of Hong Kong standard patent. I hope this article can be helpful for them when applying the Hong Kong patents in the future so that their Hong Kong patent applications can pass the examination smoothly and maintain the validity of the patents.

Q1: What are the procedures and time limits for a Hong Kong standard patent application?

Applying for a standard patent in Hong Kong consists of two stages: application and registration.

The first stage is the application stage, and the HK patent application shall be submitted to the Hong Kong Intellectual Property Department within six months counted from the date of publication of the patent application which is filed in one designated patent office of CNIPA, EPO (the UK is required to be designated) or the UKIPO. The application documents to be submitted include a P4 Form and the publication text of the designated patent application. It is not necessary to submit a power of attorney if applicant entrusts an agency to submit a standard patent application. The application fee shall be paid within one month from the submission date of P4 Form.

After the first stage of the application procedure is completed, the examiner of the Hong Kong Intellectual Property Department will conduct formal verification, and after it is correct, an announcement will be published in the Hong Kong Intellectual Property Bulletin, and the announcement information will be sent to the applicant.

The second stage is the registration stage, and the request for registration shall be submitted to the Hong Kong Intellectual Property Department within six months from the date of the announcement of designated patent which is granted a patent right. The registration documents to be submitted include P5 Form and the text of the granted publication of the designated patent. The registration fee shall be paid within one month from the submission date of P5 Form.

After the second stage of the registration procedure is completed, the examiner will check the form, issue a registration certificate and make a registration announcement after it is correct.

The above-mentioned application and registration time limited cannot be extended. If the request for application or registration is submitted exceeding the time limits, the Hong Kong Intellectual Property Department will not accept it and the lost rights will not be restored.

Q2: Do Hong Kong standard patent applications need to pay maintenance fees?

If the standard patent application fails to enter the second stage at the expiration of the fifth year of publication, the maintenance fee shall be paid every year from the expiration of the fifth year of publication date to maintain the validity of the Hong Kong standard patent application.

The procedures for paying maintenance fee are to submit P9 Form and pay maintenance fee.

Q3: How long is the protection period of Hong Kong standard patent and how to pay the annual fee?

On the premise of paying the annual fees for the Hong Kong standard patent each year, the validity period of the Hong Kong standard patent right is up to 20 years counted from the filing date of the designated patent application on which it based.

In order to maintain the validity of the standard patent, applicants need to pay the first annual fee before the fourth anniversary date of its application date counted from the standard patent grant certificate date. Subsequent annual fees will be paid before each anniversary date of its application date, until the expiration of the 20-year patent protection period.

The applicant can pay the annual fee within 3 months before the due date. During the grace period of 6 months after the due date, the patent right can still be renewed, but the surcharge for overdue payment must be paid.

The procedures for paying the annual fee are to submit the P10 Form and pay the annual fee of the corresponding annual amount.

Q4: Procedures of a registration of change of bibliographic data for Hong Kong standard patent application.

The registration of changing the name of the inventor or applicant, changing the address, changing the agent, is required to submit the P18 Form to fill in the corresponding change information, without paying official fees or providing supporting materials.

The registration of changing the applicant entity, is required to submit P19 Form to fill in the corresponding change information, pay the change official fee, and submit a copy of the certification materials at the same time. If the language of the certification materials is not English or Chinese, English or Chinese translation shall be provided.

To sum up, we briefly describe several common questions related to the Hong Kong standard patent application. On the whole, the Hong Kong standard patent application is an extension of its designated patent application, and the Hong Kong Intellectual Property Department only conducts the formal verification on the application documents. Whether it can be granted in Hong Kong ultimately depends on whether the designated patent application can be granted in its own country/area.