With a goal to transform Hong Kong into an innovation and
technology hub, the Hong Kong Administration commenced a
comprehensive review of the patent system in 2011 and issued a
consultation paper to invite comments from the public. An Advisory
Committee on Review of the Patent System was later appointed by the
Secretary for Commerce and Economic Development to review the
issues outlined in the consultation paper and to consider how the
proposed changes would be best implemented.
On February 7, 2013, the Advisory Committee published their
Report, which set out the following key recommendations:
- An Original Grant Patent ("OGP") system is to be introduced, with substantive examination outsourced to other patent offices in the initial stage and gradually building up an indigenous substantive patent examination capacity.
- The present standard patent re-registration system is to be retained, but there will not be any expansion of the designated patent offices.
While users have the choice between the two, they would be encouraged to take advantage of the OGP route.
- The short-term patent system is to be retained but refined, with recommendations to make substantive examination of a patent a prerequisite before commencing infringement proceedings, for example.
- A full-fledged regulatory regime on patent agency services will be developed in stages, with possible transitional measures to be implemented in the interim.
Recognizing that intellectual property is one of the policy instruments governments may employ to promote innovation and technology, the Administration on the same day announced that the proposals of the Advisory Committee would be adopted as the way forward for the development of the patent system in Hong Kong in order to meet the long-term economic development needs of Hong Kong.
Standard Patents and the OGP System
There are two types of patents that are currently granted in
Hong Kong, namely the standard patent and short-term patent.
Currently, a standard patent is granted for 20 years under a
re-registration system based on one of the three designated patent
offices—the State Intellectual Property Office of the
People's Republic of China, the United Kingdom Patent Office,
and the European Patent Office (for European patents designating
the UK). As it is a re-registration system, no substantive
examination is conducted.
The views on whether Hong Kong should have an OGP system have been
very diverse. Those who supported an OGP system believed that such
a system would, among other things, allow applicants to obtain
patent protection in Hong Kong at a lower cost and encourage
innovation and attract enterprises to set up their research and
development operations in Hong Kong, thereby promoting Hong Kong as
a regional innovation and technology hub.
Such a belief has been questioned by many who doubted the actual
demand for an OGP system in Hong Kong and found the existing
re-registration system a cost-effective and efficient way to offer
patent protection to those who need it, especially given the size
of the market in Hong Kong. In addition, the Administration had
indicated that the OGP system would be a "user pay"
system, and hence it is questionable whether it could indeed be
offered to applicants at a "lower cost."
It was further discovered during the consultation exercise that a
majority of respondents favored the retention of the
re-registration system irrespective of whether an OGP system would
be implemented. Balancing the interests of various stakeholders,
the Advisory Committee recommended that the current re-registration
system should remain—with no expansion of the possible
designated patent offices—while an OGP system is to be
introduced.
Since the Hong Kong Administration lacks the necessary expertise
to run an OGP system, the examination process will be outsourced to
other patent offices initially, with an aim to develop its own
patent examination capacity in the future. While users will have a
choice of both the re-registration and OGP systems, they would be
encouraged to utilize the local OGP route.
Short-Term Patents to be Retained
The short-term patent system was first introduced in Hong Kong in
1997 when the patent system was localized after the return of
sovereignty to China. A short-term patent is valid only for eight
years after all the formalities have been fulfilled, and there is
no substantive validity check before registration.
To strike a balance between the legitimate interest of a patentee
and that of a recipient of a threat letter, and to address some of
the abuses encountered so far, the Advisory Committee recommended
that the current short-term patent system be retained, but with
suitable refinements.
As a prerequisite to the commencement of infringement proceedings,
it was therefore proposed that a substantive examination or
validation of the short- term patent should be required. When a
threat of infringement action is to be made, the patentee is
required to furnish full particulars of the patent in question,
including the search report(s) and any other relevant documentation
in support of the threat. Any failure to do so would be a
groundless threat enabling the aggrieved party to seek legal
remedy.
Regulation of Patent Agency Services
Under the current legislation and related rules, the Registrar of
Patents may refuse to recognize as an agent a person who neither
resides nor has a place of business in Hong Kong or, for example,
is convicted of a criminal offense. However, there is no general
regulation of the patent agency services in Hong Kong.
Many respondents to the consultation paper supported some kind of
regulation on the patent agency services, but views were divided as
to whether all or only some of the patent-related services should
be restricted to persons meeting certain qualifications or
requirements or whether restrictions should be imposed only on the
use of particular titles.
It was finally recommended that a full-fledged regulatory regime
on patent agency services should be developed in the long term but
be introduced in stages. The Advisory Committee suggested that
interim measures should be put in place with regard to existing
patent agency services already being provided and the building up
of a local patent agency profession through possible statutory
controls over professional titles such as "patent agent"
and "patent attorney."
Conclusion
The Administration will continue its consultation with the
Advisory Committee and other stakeholders on the implementation of
the proposals and detailed plan during the second and third
quarters of this year. Simultaneously, it will also be discussing
the detailed outsourcing arrangements with the preferred outside
patent office(s), one of which is likely to be the State
Intellectual Property Office of the People's Republic of
China.
Once this is done, the Administration will start to develop
in-house capability to implement the OGP system, including
recruitment and training of staff and putting in place standards,
procedures, databases, and manuals with necessary input from
outside experts or consultants.
A draft Bill to amend the Patents Ordinance is tentatively planned
to be introduced in 2014–2015, with an aim to commence the
OGP system in 2016–2017.
The goal is obviously ambitious, and the way forward is not
without challenges. Given the increasingly intense competition
brought about by globalization and its neighboring countries, Hong
Kong has a long way to go before it can turn itself into an
innovation and technology hub. The patent reform may be seen by
many to be a solution to these challenges, but it is yet to be seen
how these goals are to be achieved. The devil is always in the
details.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.