18 July, 2016
The passage of the Patents (Amendment) Ordinance 2016 on 10 June 2016 marks the culmination of a 5 year review of Hong Kong’s patent law intended to ensure that the system continues to meet the needs of Hong Kong and to align the system with the Government’s vision to develop Hong Kong into a regional innovation and technology hub. The Government hopes to implement the new system by early 2018.
Key changes include:
- the introduction of an "original grant" patent (OGP) system for direct filing of standard patent applications in Hong Kong;
- a substantive examination procedure for Hong Kong short-term patents;
- confirmation that up to two independent claims may be included in a short term patent;
- express provisions for second medical use claims;
- the introduction of provisions dealing with entitlement disputes, restoration of priority rights for applications of “original grant” standard patent and the ability to submit third party observations before the IPD; and
- restriction of the use by individuals of certain titles for supplying patent agency services in Hong Kong which may imply endorsement by the Government, or recognition by law.
Introduction of an OGP
The most significant change outlined in the Ordinance is the introduction of an OGP system for standard patents, which will run in parallel with the existing “re-registration” system. Standard patents applied for under the new OGP system and the existing “reregistration” systems are referred to as standard patents (O) and standard patents (R) respectively.
The existing re-registration system for obtaining a standard patent (R) will be maintained. Currently, the re-registration process of a standard patent is a two stage process. The first stage involves filing a request to record with the Hong Kong Patents Registry based upon a pending application in the UK, Europe or China (the “designated patent application”). This must be done within 6 months of publication of the designated patent application. Once the designated patent application has proceeded to grant, an application for registration and grant must be filed in Hong Kong within 6 months of the grant of the designated patent application.
Under the new OGP system for standard patents (O), it will be possible to file a standard originating patent application directly with the Hong Kong Registrar, either with a claim to priority, or as a first filing, thereby obviating the need for a foreign designated patent application. A standard originating patent application will be subjected to a substantive examination (initially by the Chinese State Intellectual Property Office but ultimately by the Hong Kong Intellectual Property Department) before it will be allowed to proceed to grant. Therefore, the resulting patent should carry a similar presumption of validity as a corresponding standard patent under the re-registration system.
The standard originating patent is likely to be of benefit to applicants who have no interest in securing patent protection in China, Europe or the UK but wish to more cost effectively obtain a 20 year patent monopoly in Hong Kong.
It is important to note that it will not be possible to file a Hong Kong standard originating patent application directly from an international PCT application. Consequently, the existing re-registration system will continue to be the only route via which a standard patent may be obtained in Hong Kong via the PCT.
Refining the short-term patent system
The short-term patent system will see the introduction of a substantive examination procedure as well as other important changes.
The proposed substantive examination procedure will enable both a proprietor of a short-term patent and, in certain circumstances, a third party to request the Registrar to conduct a post-grant substantive examination in respect of a short-term patent. The result of this procedure will be the issuance of a “certificate of substantive examination” confirming the validity of the patent (including any requested amendments) or, in the event the patent is ultimately found invalid, its revocation.
Notably, a request for substantive examination will not be able to be withdrawn once filed. Therefore, before filing such a request, proprietors should first satisfy themselves of the patent’s validity either as it stands, or as proposed to be amended. Similarly, third parties seeking to gain leverage in negotiations, should carefully consider the implications before filing a request for substantive examination, bearing in mind that the threat of a request may be more effective than the request itself.
A request for substantive examination or a certificate of substantive examination will become a requirement for commencing enforcement proceedings in respect of a short-term patent before the court. A potential disadvantage of requiring such precommencement substantive examination is increased costs and longer processing time which may reduce the attractiveness of the short-term patent system.
Notwithstanding, it is hoped the introduction of a substantive examination procedure will increase the integrity of registered patents. It should also facilitate challenging the validity of a short-term patent by third parties which should help to ensure that only short-term patents with a high presumption of validity are the subject of litigation.
The short-term patent system will also be amended to permit a second independent claim. This should enable applicants to obtain more than one species of claim, such as a product claim and a method claim. This will enable broader short-term patent protection to be obtained in a more cost effective manner than before.
OGP entitlement
The Ordinance introduces the power for the Hong Kong Registrar or the Hong Kong court to determine whether a person is entitled to apply for a standard patent (O) in relation to an invention, whether or not a standard patent (O) application has been filed. Where an application has been filed, the Register or court may determine whether any right in our under the application should be transferred or granted to any other person.
For standard patents (R), entitlement disputes in relation to the designated patent applications will still need to be resolved according to the laws of the designated patent offices.
Restoration of priority rights
For standard patents (O) and short-term patents, the Ordinance provides for restoration of priority up to the end of 2 months after the expiry of the normal 12-month priority period. This approach is analogous to section 5 of the UK Patents Act 1977 and provides for greater flexibility in Hong Kong for resurrecting late priority claims. China does not allow late claims to priority after the expiry of the 12-month priority period and Europe requires an applicant to meet the “all due care requirements” before restoration will be allowed.
Third party observations
As with other major jurisdictions in which substantive examination is carried out, the Ordinance includes a mechanism for third parties to submit observations in respect of both a standard originating patent application and a short-term patent. Observations can be a useful tool for third parties to interfere with the substantive examination procedure and influence the decision of the Registrar without becoming officially involved in proceedings.
Post-grant amendment before the Registry
The Patents (Amendment) Ordinance 2016 will also see the introduction of a new post-grant amendment procedure for both a standard originating patent and a short-term patent in respect of which a certificate of substantive examination has been issued.
This will enable a patent proprietor to submit requests for amendment in respect of such patents not only to the Court but also to the Registrar. This will be beneficial as it is likely to be simpler and cheaper to make a post-grant amendment with the Registrar than with the Court.
For a standard patent obtained via the existing re-registration system, the Court will continue to be the only authority through which a post-grant amendment may be made.
Second medical use
The Hong Kong Patents Ordinance (Cap. 514) currently does not contain any express provision in respect of the novelty of so-called “second medical use” inventions. These relate to a second or further medical use of a substance or composition which is already known. This is in contrast to the legal position in jurisdictions such as Europe and the UK where second medical use claims are specifically permitted through explicit legislative provisions.
This discrepancy has given rise to potential uncertainty for proprietors of Hong Kong patents and, in particular, proprietors of patents that include second medical use claims equivalent to those of the corresponding designated patent in China, Europe or the UK.
The Patents (Amendment) Ordinance 2016, allowing the protection of a known substance or composition for a new specific use, will bring Hong Kong into line with Europe and the UK by including similar provisions for novelty of second medical use claims and remove uncertainty for patent proprietors and third parties.
Restriction on the use of ‘Patent Agent’ and similar titles
One of the concerns with the current law is that there is no restriction on people describing themselves as a Patent Agent, Patent Attorney or other similar expression, even though such terms are well-defined in many other jurisdictions around the world. The regulation of patent agency services in Hong Kong has given rise to much debate and it is expected that, eventually, only those individuals who have obtained appropriate qualifications will be entitled to offer such services and use professional titles such as “patent agent” and “patent attorney”.
In the interim, the Ordinance prohibits the use by a person in Hong Kong of a title or description such as “certified patent agent/attorney”, “registered patent agent/attorney” or any other title that may reasonably cause anyone to believe that the person holds a qualification, recognised by law or endorsed by the Government, for providing patent agency services in Hong Kong.
However, the new provision will not prevent a person from using a title or description that solely relates to the person’s qualification for lawfully providing patent agency services in jurisdictions outside Hong Kong provided that the relevant jurisdiction is clearly indicated. It is hoped that Hong Kong will eventually move towards a full-fledged regulatory regime to ensure that patent-related assistance and advice offered by practitioners in Hong Kong meets a minimum standard.
Conclusion
Hong Kong’s development from a virtually unpopulated backwater to one of the most important international financial centres in the world is a well-known success story. The reform of its patent system is seen as one of the key components of the next stage of Hong Kong’s political and economic development.
The retention of the old system will allow applicants the choice of applying directly in Hong Kong for an originating patent, or to protect their rights through "re-registration" as before. The new law should provide patent owners with more options for protecting their rights but patent owners will need to plan their filing strategy carefully depending on market and operational needs.
James McHugh, Deacons
james.mchugh@deacons.com.hk
