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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.


m0cha_1atte said...

I think the "outsourcing" option is a good compromise, at least as a first step towards a more robust and authoritative patent system.

Take a look at the Singapore system which now outsources its search and examination processes - about 10,000 patent filings a year, about 5 million population. These are very comparable figures to HK. Yet Singapore seems to attract better/more R&D investments.

Patent Agent said...

We don't see that Original Grant System alone can attract R&D. Singapore has a whole package / environment for supporting a lot of things. Hong Kong is supporting real-estate, the rest is secondary.

In short, we want to keep 're-registration'. If Original Grant System was to be introduced, we only support out-sourcing of the substantive examination, so as to reduce cost.

Jen said...

Hi there, patent agent. I have randomly came across this blog during my job search and am very impressed by this informative site.

I worked as a patent anlayst overseas for a couple of years and am currently trying to look for a similar position in HK. I have been searching for over a month but with no luck till now. It seems like people out there prefer qualified solicitors to handle their IP matters and there is no room for science graduates like me. Any advice? I appreciate any comment from you.

Patent Agent said...

Jen: Currently, there are two types of firms that handle patent application and prosecution in Hong Kong: Law firm and IP firm. There may be some IP firm that need skill in patent drafting and prosecution that you can try your luck.