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Please note that I have to move my blog, and hence the old feed burner doesn't work anymore. Please subscribe to the new feed. Sorry for the trouble.

Thursday, November 24, 2011

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.

Saturday, November 19, 2011

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.

Friday, November 18, 2011

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.

Wednesday, November 16, 2011

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).

Tuesday, November 15, 2011

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.

Monday, November 14, 2011

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.