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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).

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