Keywords: patent system, Hong Kong, re-registration, standard patents,

On 7 February 2013, just two days before the Chinese New Year holidays, the Government published the Report of the Advisory Committee on Review of the Patent System in Hong Kong ("Committee"). As part of the review, a public consultation paper was issued in October 2011 to invite views on whether an original grant patent (OGP) system should be introduced in Hong Kong; whether the current re-registration system for standard patents should be maintained and if so, whether it should be expanded to recognise patents granted by offices other than the European Patent Office, the United Kingdom Patent Office and the PRC Patent Office; whether the short-term patent system should be retained and improved; and whether patent agency services should be regulated and how. (Please see the attached article, 'Is patent reform in Hong Kong on the horizon', also by Kenny Wong, published in the June 2012 issue of Intellectual Property Magazine.) A total of 74 submissions were received and considered.

The Committee acknowledges that the views on whether Hong Kong should have an OGP system are diverse. Strong reservations have been expressed in some of the submissions as to whether an OGP system can boost the desired stimulation of local innovation, and whether with substantive examination outsourced, the system would help develop and train patent professionals in Hong Kong. While those in favour argue that an OGP system allows applicants who wish to file only in Hong Kong to do so at a lower cost, concerns have been raised by many who file both in Hong Kong and elsewhere that since the cost of obtaining an OGP rather than a re-registration could be much higher, the OGP system should not be introduced at the expense of those who use the re-registration system; and further, public funds should be used to subsidise OGP applicants. Such concerns are indeed valid considering that on average, the percentage of standard patents filed with the Hong Kong Patent Registry which originated from Hong Kong in the past five years was only about 1.3 percent of the total standard patents applied for.

Despite concerns expressed by professional bodies like the Law Society, the Asian Patent Attorney Association (Hong Kong Group) and the Hong Kong Institute of Trade Mark Practitioners, and by trade associations like the American Chamber of Commerce in Hong Kong and Hong Kong General Chamber of Commerce, about the justification and cost efficiency of an OGP system for Hong Kong, the Advisory Committee recommends the introduction of an OGP system with substantive examination outsourced to other patent offices; it also recommends retaining the current re-registration system to help Hong Kong achieve its vision of becoming a world class innovation and technology hub. The Committee takes the view that an OGP system would allow Hong Kong to determine patentability criteria and standards, procedures, practices and other matters in accordance with the requirements and in a way which best meets the economic needs of Hong Kong. The Committee considers that since 59 out of the 60 largest economies in terms of GDP have their own OGP systems (in 1997), there may be a correlation between adopting, or migrating to, an OGP system and the stage of economic development. On the other hand, re-registration and extension of overseas registration systems appear to be used by many least developed, or developing, countries for various economic, historical and other reasons. As the Government has made, and continues to make, significant investments to turn Hong Kong into an innovation and technology hub, and to promote Hong Kong as a regional IP trading hub, it is time to perfect the Hong Kong patent system and develop Hong Kong's own patent examination capacity in the long run.

The Committee accepts that the perceived difficulties, particularly the considerable resources needed to set up the infrastructure and build the requisite expertise, are genuine concerns, but believes they are not insurmountable. Depending on users' acceptance of the OGP system and how it may develop, in-house substantive patent examination may be carried out in Hong Kong in incremental stages. In this connection, in order not to create any complication or inconsistency, the Committee does not favour the expansion of recognition of foreign patents under the re-registration system.

So far as the short-term patent system is concerned, in line with the vast majority of respondents to the public consultation, the Committee recommends its retention. In light of responses about possible abuse of the system and suggestions for its refinement, the Committee recommends substantive examination be made a prerequisite to the commencement of infringement proceedings for short-term patents.

The Committee also proposes ways in which groundless threat provisions related to short-term patents should be strengthened. For example, the Committee recommends that when a short-term patentee threatens to take infringement action, he or she should furnish the person to whom the threat is made with full particulars about the short-term patent in question, including the search report and any other relevant documentation in support of the threat. Failure to do so would render the threat groundless and the party aggrieved by such a threat could seek a legal remedy. It is also recommended that both the patentees and third parties who have a legitimate concern or doubt about the validity of a short-term patent should have the right to apply for a substantive examination of the short-term patent, and the related official fees should be made by the person making the request. Although there are submissions to extend the maximum term of protection of the short-term patent to ten years, the Committee recommends maintaining the current eight years. The Committee further recommends maintaining the current patentability criteria of short-term patents but exploring whether to maintain the current restrictions in the number of independent claims for short-term patents.

As for regulation of patent agent services, the Committee considers that there is a case for expediting the building up of a strong patent agent profession as a complementary component to the introduction of an OGP system and the proposed refined short-term patent system. Whilst a full fledged regulatory regime on patent agency services should be set as the ultimate goal, this should be introduced in stages given that it will take considerable time to build up local patent professionals. In the first instance, services that involve technical expertise such as drafting patent specification and claims, conducting clearance searches, advising on responding to queries on patentability raised by examiners and giving advice on the validity or infringement of patents, should only be provided by qualified persons or firms. The Committee further agrees that interim measures may also include statutory controls over titles such as 'patent agents' and 'patent attorneys' and the building of a list with essential information about patent practitioners which shall be centrally administered and made publicly available. The Committee will further explore the detailed implementation issues in the next phase of the review subject to the Government Administration's decision on the way forward.

Previously published on 18 February 2013.

Visit us at www.mayerbrownjsm.com

Mayer Brown is a global legal services organization comprising legal practices that are separate entities (the Mayer Brown Practices). The Mayer Brown Practices are: Mayer Brown LLP, a limited liability partnership established in the United States; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales; Mayer Brown JSM, a Hong Kong partnership, and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.

© Copyright 2013. The Mayer Brown Practices. All rights reserved.

This article provides information and comments on legal issues and developments of interest. The foregoing is not a comprehensive treatment of the subject matter covered and is not intended to provide legal advice. Readers should seek specific legal advice before taking any action with respect to the matters discussed herein. Please also read the JSM legal publications Disclaimer.