Consultation on Review of the Patent System in Hong Kong

Today is the deadline to submit our opinion on the subject. Here is summary of our response:

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.

Regulation of Patent Agency Services in Hong Kong

We have discussed a couple of time in the past about regulation of patent agent / patent attorney in Hong Kong. In short, there is no restriction on who can act as an agent for others or carry on the business as a patent agent.


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.

Hong Kong Patent System: Substantive Examination

As part of the review of the Patent System in Hong Kong, the examination system for standard patent is part of the system that is being consideration for revamp.


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.

New layout and non-working RSS

We have problem with the RSS, which is not working for awhile, so we were trying to fix it and not successful. While we were trying to fix it, we have changed the layout a bit. Hope you like it.

Short-term patent system in Hong Kong

There is one question in the Review of the 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).

Number of patent applications per year in Hong Kong

Hong Kong is reviewing its patent system and information disclosed are interesting. In the past 5 years, there were about 13,000 per year. The number actually declines in year 2009 and 2010. Does it reflect the local R&D are reduced in the economic downturn? Luckily we are not affected.

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.

A folk innovator of China

Maybe most of us would imagine that only a large corporation could afford to invest in an innovation. Nevertheless, a folk innovator of China displays that our concept is wrong.

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.

Hong Kong as Asia's IP Trading Platform

Hong Kong Trade Development Council (HKTDC) and Hong Kong Design Centre (HKDC) organize a one day conference with the title "Hong Kong as Asia's IP Trading Platform" on 2 December 2011. Details of the function can be found here. We have not much involvement in the past in terms of IP trading. We have not made up our mind whether to join or not.

Cost is HKD400 per head including Keynote Luncheon, so it is not expensive by all standard.

Posting from the restaurant

Just try out on the iPod touch version of blogger to post this blog. And I am also reading some recently published patents applied by Apple. So better laptop are coming soon enough.

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.yahoo.com/紅底黃字w商標-麥當勞要封殺-213301877.html

Translation of Chinese patent applications into English

Demand for translation works has been increased in the past 12-months.

In the standard process for our clients who file their first patent application in China and followed by filing the same in US and EPO, we translate from Chinese to English for any redrafting work done by patent attorney in US or Europe. This is an obvious choice for those inventor / applicant who can approve Chinese language.

Our US clients have their patent applications first filed in US need translation from English to Chinese for further redraft before filing to China SIPO.

In the past year, we also have requests from foreign attorney to translate Chinese patent application into English for possible litigation process in US or China, and this type of demand is increasing.

One client believed that his competitor have a patent granted in China that actually copied some of the key features of his products. In order to start the legal process to invalidate the Chinese patent, the first step was to perform evaluation and a formal translation of the Chinese patent was performed by us and the client's US attorney reviewed the Chinese patent. After that we have also translated a few US patents into Chinese for the legal process in China to invalidate the competitor's China patent. The legal process in China is now in progress.

With change to PCT rule 34.1 on minimum documentation to include Chinese patent documents as prior arts becomes effective on 1 July 2012, we think that the demand for translation on patent application related to Chinese language would be increased. Our translators in Hong Kong and China would pick up more business in the near future.

A background analysis on the subject can be found in an April blog from The Patent Bric. The Chinese news posted on SIPO can be found here.

Unix and C creator Dennis Ritchie dies at 70

In my previous life, before I head for patent applications, I was a programmer / system engineer / developer. Now, I would like to use one of my blog to thank someone who created C programming language. I have been using C for above 5 years in my professional life.

Related news in BBC, and Computer World (UK).

Samsung’s Patent War With Apple - at the last days of Steve Jobs

Samsung is seeking an injunction to get the new iPhone 4S banned from sale in France and Italy. It claims that Apple has used 3G wireless technology, which Samsung invented, without paying for it.
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.

An Unprecedented Era of Innovation

Chief of China Intellectual Property Office pointed out that the world is entering into an unprecedented era of innovation-intensive and industrial revitalization. There are four characteristics of such era: technology update and conversion cycle are shortened, the amounts of technologies increase violently, the frontier technologies become more complex and the links between technology are close.

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.

China is going to focus on 10 Major Technologies!!!

Recently, the patent analysis and early warning group of State Intellectual Property Office has emphasized that China is going to lock eyes on patent analysis and early warning via its internal meeting. China strives to break with the inherent ideas and makes new ideas actively. There is no doubt that such internal report plays a supportive role for the preset guidance and decision-making audience.

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).

Seminar on Patent infringement and litigation in July

Just received a mail from China Law Society Training Centre that they are going to organize a seminar on Patent Infringement and Litigation, the seminar is to be held on 9-11 July 2011. The contents of the seminar is very attractive for me, though I do not have the qualification to appear in Chinese court, but it is good to know the law and the process. I have a couple of litigation cases that I am working back and fro with Chinese patent attorney and attorney of law to plan for some actions to be taken shortly.

The instructors of the seminar include 'expert' from the Beijing Courts and High Court. Cost of the seminar is reasonable, using Hong Kong standard, it is only RMB2000 (about USD300) plus hotel and expenses.

Too bad that I have to assist in a court case in Hong Kong starting from 4 July 2011. So I will not be able to attend this time and hopefully they will organize another one in Guangdong in the near future.

In case you are interested, and able to understand Chinese, here is information related to the seminar.

Jun 4 movement 22 years ago

22 years ago, the call for democracy was met with tanks and guns. 22 years later, there are a few demonstrators still in jail and a large number of them denied the right to go back to China.

A moment of silence for those who lost their life 22 years ago, and the call for the release of Ai Wei Wei, Liu Xiao Bo and many others who are jailed or illegal detained throughout China.

Summer promotion by China Intellectual Property HK Limited

Our company is running a promotion this summer. We charge a flat fee for filing patent of invention application to State Intellectual Property Office of China for US$3,000 per application (translation, drafting and examination fee excluded). This fee also include claiming of foreign priority and condition applies.

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.

Note: The US$3,000 fee represents a standard application process and handle patent of invention only. The fee does not include translation of patent application in your language into Chinese, and possible redrafting of patent application suitable for filing in China, and cost of draftsman work on patent drawing. Examination fee is not paid at time of filing and is not included in the US$3,000 quoted fee. Applicant is required to provide foreign priority certificate and courier to our office.

Hong Kong Patent Attorney

There are professionals in Hong Kong trying to push for certification of patent attorney / patent agent. That will be an important move for intellectual protection in Hong Kong.