I want to share my experience, as a patent agent in Hong Kong, for working on Intellectual Property Protection in China and the rest of the world.
Saturday, December 31, 2011
Consultation on Review of the Patent System in Hong Kong
1. We do not support the introduction of OGP system in Hong Kong.
2. We strongly support to keep the existing re-registration system. The re-registration system can be further improved by recognizing examination result of US PTO and EPO in addition to existing arrangement.
3. We support to cancel Short-term patents all together in Hong Kong.
4. We support mandatory substantive examination be required before any legal action taken by the short-term patent assignee, should the Short-term patents system is kept in Hong Kong.
5. We have a lot of concern to regulate patent agency service in Hong Kong, with the uncertainty on the outcome of the patent system review, including the introduction of OGP to Hong Kong. We support that no change should be made at this time.
This is the last day of 2011 and we wish everyone have a great year in 2012.
Thursday, November 24, 2011
Regulation of Patent Agency Services in Hong Kong
Our firm has staff with legal and science qualification, but there is no specific examination or qualification requirement to provide patent agency service in Hong Kong. The current Review of the Patent System in Hong Kong also touches on this subject. However, it may be difficult to regulate as some firms, like ourself, do a lot of work to help customers to file patent (and trademark for that matter) applications outside Hong Kong. We rely on our associated patent attorney in France to handle our patent work for representation before European Patent Office. We instructed patent attorney in other countries for handle works in their respective countries. For this type of work, would it be regulated in Hong Kong in the future? We are closely monitoring the ongoing consultation on the subject.
Saturday, November 19, 2011
Hong Kong Patent System: Substantive Examination
Currently, Hong Kong is using a 'Re-registration system'. Simply put, we don't have patent examiner to examine patent application. A patent that is granted by China or UK patent office can apply for registration in Hong Kong, provided certain procedural steps are followed. For UK patent office, that also applies for applications granted by European Patent Office with UK as one of the designated country.
One way to look at it, any one who have a granted patent in China or UK, the cost to get patent registered in Hong Kong is small. On the other hand, if an inventor intended to seek for protection in Hong Kong only, there was no quick and easy way, the inventor need to first file the same in China or UK. The route is longer and cost more as compared with getting it examined in Hong Kong. And this is the reason why there were suggestion to revamp this system.
As we have pointed out in an earlier blog, there were only 13,000 patent applications per year in Hong Kong. With that size, to keep a broad of examiners to handle various types of patent applications may not be economical. So the consultation paper further suggest to outsource the substantive examination to other examination authority. So it defeats the purpose of training people with the necessary skill to handle patent in Hong Kong.
As an alternative, the current 're-registration system' will go hand-in-hand with 'original grant system', and that will call for different fee structures for different routes. That is, for anyone who seeks for protection outside Hong Kong, and require protection in Hong Kong, would favor the re-registration system so as to save cost. In the unlikely event that an invention that worth only protection in Hong Kong would go for original grant system. Of course, in a case that requires protection in Hong Kong and countries other than China and UK, that may not favor either system. We doubt the popularity as such case, as China and Europe would be major trade partners of Hong Kong.
Further when we look at Europe, they have instituted one examination system, the European Patent Office, as a money saving route to get patent protection in multiple countries. We are of the view that original grant system in Hong Kong is moving in the wrong direction for reducing cost of doing business on a global platform.
It is our view that we don't see the urgency to introduce original grant system and we strongly urge to keep the current re-registration system, so that we still have a choice.
Friday, November 18, 2011
New layout and non-working RSS
Wednesday, November 16, 2011
Short-term patent system in Hong Kong
(c) Whether the short-term patent system should be retained as a supplement to standard patents?
Our answer is no. We agree that the short-term patent system be abolished.
Let's look at some background: there are two types of patent in Hong Kong: Standard Patent and Short-term Patent. In short, a Standard Patent is granted in Hong Kong if the same application was granted in either China or UK, assuming certain procedural steps are followed. That is, Hong Kong recognize the granting of patent in UK or China as the necessary requirement in Hong Kong, and there is no examination board here to handle patent application.
In order to get a short-term patent, applicant needs to provide a search report by recognized patent searching authority, further, a short-term patent is limited to one claim per application, with a protection term limited to 8 years (as compared with 20 years for standard patent).
The short-term patent does provide a faster and less costly route to obtain patent protection in Hong Kong. However, as the procedure is different from a standard patent and may lead to abuse. It only encourage inventors with less resources to take this route, however, because of it's limitation, some of these short-terms patent may not be enforceable. In Hong Kong court, normally a short-term patent certificate is not sufficient to prove that novelty and inventiveness of the invention.
We suggest that short-term patent may invite inventor of less resources to seek for IP protection via patent application, but the novelty of such invention is in doubt.
Further, we should look at the current number, in the consultation paper prepared by Hong Kong SAR Government, it shows that in the year 2006-2010, the total number of Standard Patent Applications per year is 13,790, 13,766, 13,662, 11,857 and 11,702 respectively. For Short-term Patent Applications, the number is 520, 599, 488, 551 and 614 respectively. We are talking about less than 5% of the total applications are Short-term Patent.
The discontinuation of short-term patent system would, in theory, reduce the number of applications by 5% max.
The issue is whether such system may encourage inventors to invest more R&D work in Hong Kong, creating inventive works to compete in the global market, etc. Our answer is, we don't know, and we don't know by keeping this system, we will encourage more R&D being done in Hong Kong.
If we are to keep short-term patent, we are of the position that we should not lower criteria for patent granting. It only further invite abuse. We should also consider the requirement that substantive examination should be required before infringement action can be taken (as suggested in 2.11 of the consultation paper).
Tuesday, November 15, 2011
Number of patent applications per year in Hong Kong
May be because of hard work by Hong Kong Productivity Council, we believe that the number of patent application grant is in the upward trend lately.
Monday, November 14, 2011
A folk innovator of China
He Zengrong, a folk innovator of China, who has paid patent maintenance fee for 9 years, has been granted on five applications since 1998, including two invention patent. As an innovator of enthusiasms, Mr. He brings his own innovations to take part in every ‘’Patent Supermarket’’ in Wuhan(武漢) each month to consult with investors there.
Mr. He believes his invention---Electric mosquito coils terminator. When his daughter had produced a baby in hospital, he had used his Electric mosquito coils to drive the mosquito. He expressed that only using his own Electricmosquito coils could make him to feel at ease. At present, Mr. He’s Electric mosquito coils can bring 20,000 RMB a month for him and he will put that money as capital on his innovation.
"The certification of patent is the proof of success for each innovator." Mr. He said. Without a certification of patent, the corporation might turn down to collaborate because of the high risk and the low market acceptance. In an other word, having a certification of patent can increase an opportunity to cooperate with corporation.
Finally, Mr. He claimed all innovators would also have a common wish that using their innovations contribute to the society. Mr. He, a folk innovator of China told us that enthusiasm and persistence were the most essential elements for innovation. Mr. He is so successful and was single out in a Chinese report by the SIPO.
Wednesday, October 26, 2011
Hong Kong as Asia's IP Trading Platform
Sunday, October 23, 2011
Posting from the restaurant
Thursday, October 20, 2011
McDonald's blocks the yellow ‘’W’’ on red!!
"You use 'M' as your company trade mark so that I would be banned to use 'W'? Your 'M' trade mark represents a door, whereas our 'W' represents a container. There is no relationship with McDonald's," a spokesman of 'WONDERFUL萬德福' said.
'WONDERFUL萬德福' is a company involved in producing different kinds of foods and related services in China, uses a yellow 'W' on red as its trade mark. In 2003, WONDERFUL's trademark registration was objected by McDonald’s. The outcome was that WONDERFUL was revoked with the registration in the restaurant category.
However, McDonald’s does not satisfy the result and further pursue for the removal of the 'W' mark completely.
The legal process is now being handled in Beijing's court. http://hk.news.
Saturday, October 15, 2011
Translation of Chinese patent applications into English
Friday, October 14, 2011
Unix and C creator Dennis Ritchie dies at 70
Thursday, October 6, 2011
Samsung’s Patent War With Apple - at the last days of Steve Jobs
Samsung said in a statement "Apple has continued to flagrantly violate our intellectual property rights and free ride on our technology, and we will steadfastly protect our intellectual property,".
A patent war between the companies has been booming!! This is particular painful for Apple when they lost their beloved founder.
News in Total Telecom.
Monday, September 26, 2011
An Unprecedented Era of Innovation
Furthermore, the Officer claimed the system of intellectual property, which is an essential and supportive tool for the development of innovation, should conform the era to satisfy the demand of market.
The news (in Chinese) can be found here.
Thursday, September 22, 2011
China is going to focus on 10 Major Technologies!!!
The patent analysis and early warning programs of State Intellectual Property Office will focus on the10 major technologies, including, LTE technology (4G), high-performance computer chip instruction system, smart grid technology, bio-breeding technology, high-performance rare earth functional materials, cloud computing data center cooling and energy saving technology, vehicle fuel cell technology, carbon-chemical technology, oil and gas exploration and development of geophysical exploration technology and environmental pollution detection.
The original posting dated 19 Sep 2011 can be found here (in Chinese).
Friday, June 10, 2011
Seminar on Patent infringement and litigation in July
Saturday, June 4, 2011
Jun 4 movement 22 years ago
Thursday, June 2, 2011
Summer promotion by China Intellectual Property HK Limited
Our company is also giving away free iPad2 (32G Wifi) for any inventor or foreign patent agent who fill 3 patent applications through us by 30 Sep 2011. To qualify, you must confirm and approve the final draft of patent application suitable for filing to State Intellectual Property Office of China and pay up cost on account before 23 Sep 2011.