WORLD PATENT & TRADEMARKOSAKA
DAIWA MINAMIMORIMACHI BLDG.,
2-6, 2-CHOME-KITA, TENJINBASHI,
KITA-KU,OSAKA 530-0041 JAPAN
WORLD TRADE CENTER BLDG. 21 F,HIROSHIMA
2-4-1, HAMAMATSU- CHO, MINATO-KU,
NOMURA REAL ESTATE HIROSHIMA BLDG. 4 F, 2-23 TATEMACHI, NAKA-KU, HIROSHIMA CITY, HIROSHIMA 730-0032, JAPANTo be opened
GLOBAL GATE 9F, 4-60-12 HIRAIKE-CHO, NAKAMURA-KU, NAGOYA-SHI, AICHI 453-6109, JAPAN
In the background of the HARAKENZO trademark is a global map wherein countries/regions are sized according to the number of patents registered there in 1991.
|Information on Developing Countries
(BRICs, VISTA, et cetera)
Patent engineering staff specialized in patent affairs : Ou Sun
Design/trademark staff specialized in design/trademark affairs : Chiaki GOMITA
|| : 81 - 3 - 3433 - 5810
|| : 81 - 6 - 6351 - 4384
|| : 81 - 3 - 3433 - 5281
|| : 81 - 6 - 6351 - 5664
|| : 81 - 82 - 545 - 3680
|| : 81 - 52 - 589 - 2581
|| : 81 - 82 - 243 - 4130
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General Information on Hong Kong
Hong Kong (formal name: Hong Kong Special Administrative Region of the People's Republic of China) is the third largest financial center following New York and London. Hong Kong, which was a small fishing village around 1840s, grew up to have a land area of 1104 square kilometers and a population of 7.13 million. Celebrities well-known in Japan such as Bruce Lee and Jackie Chan are from Hong Kong.
From 1842, when the Opium War ended, to 1997, Hong Kong had been under the rule of the United Kingdom as a colony. On July 1, 1997, Chinese government resumed sovereignty over Hong Kong and established "Hong Kong Special Administrative Region (SAR)".
In Hong Kong, including the Hong Kong Island, the Kowloon Peninsula and the New Territories, it is warm throughout the year thanks to sub-tropical climate. The annual average temperature is 22.8 degrees Celsius. However, due to the geographic and environmental factors, Hong Kong is poor in natural resources. Most precious natural resources are marine resources from the South China Sea.
Hong Kong has joined in the Madrid Protocol, the Nice Agreement, the WTO Agreement, the APEC and the like.
Intellectual Property System of Hong Kong
The intellectual property law of Hong Kong covers mainly patent, trademark, design, and copyright. The outlines of patent, trademark and design are shown in the table below.
|Language of Application
||Chinese or English
|Claim of Priority
|Request for Revocation/Invalidation
< 1 > Patent
Hong Kong does not have a system for substantive examination on patentability, but has a unique patent system.
- (a)-1. Standard Patent Application System
Applicant can file a standard patent application on the basis of a patent registered (hereinafter "designated patent") in any one of the China Patent Office (State Intellectual Property Office, SIPO), the European Patent Office, and the U.K. Patent Office, within 6 months from the registration date of the patent. Specifically, the following steps (i) and (ii) need to be taken.
(i) To file a "request to record" a patent application (hereinafter "designated patent") for which patent protection in Hong Kong is sought, that was published by any one of the above 3 patent offices within 6 months from the publication date of the patent application
(ii) To file a "request for registration and grant" of the patent application within 6 months from the date on which the patent was registered by any of the above 3 patent offices.
Note: A patent application filed with any one of the above 3 patent offices on which patent application a standard patent application is based is hereinafter referred to as a "designated patent application".
A right of priority can be claimed on the basis of a patent application filed earlier in a member state of the Paris Convention. A right of priority can be claimed also in cases where specific requirements are met (Section 98 of Hong Kong Patents Ordinance).
The maximum duration of a standard patent is 20 years from the filing date of the designated patent application.
A request for registration of a patent can be filed for a standard patent application including a divisional application of a designated patent application and a subsequent application which is the designated patent application having an additional new feature(s). Note, however, that a request for registering a part obtained by broadening a corresponding feature that has been already disclosed is not accepted.
Standard patent application can be voluntarily amended after a designated patent application is published and before registration of the standard patent application is allowed. Amendment should be made within the scope of disclosure of standard patent application as originally filed and coincide with the amendment that has made to a designated patent application.
In a case where a standard patent application has not progressed to the second stage (request for registration and grant) five years after publication of the request to record, it becomes necessary to maintain the application. Maintenance involves timely filing of a request to maintain and payment of the maintenance fee. This can be done as early as three months prior to the aforementioned five year deadline (or any subsequent deadline).
Applicants can pay the maintenance fee up to six months after the deadline for requesting maintenance, in which case late payment fees will be incurred. Furthermore, even after this six-month period has passed, provided that there exist legitimate reasons for non-payment, an applicant can request reinstatement of a standard patent application up to twelve months after the date that the application was deemed to be withdrawn.
Note, however, that a request to maintain will be rejected in cases where the designated patent application has been withdrawn/rejected, or in cases where six months have passed since the date of registration of the designated patent application.
- (a)-2. Short-term Patent Application System
Applicant can file a short-term patent application on the basis of a search report issued by any one of the international searching authorities, the China Patent Office (SIPO), the European Patent Office, and the United Kingdom Patent Office. Time limit for filing the application is not basically defined.
If Applicant wishes to claim priority, Applicant is required to file a short-term patent application within 12 months from the first priority date. Note that priority is claimed based on (i) an earlier application etc. which was filed in a member nation of Paris Convention or WTO or (ii) a short-term patent application filed earlier in Hong Kong.
The maximum duration of a short-term patent is 8 years from the filing date. Also, a deferment of the registration of a patent can be requested (Section 119 of Hong Kong Patents Ordinance).
A divisional application of a short-term patent application can be filed before preparation for publication of registration of the short-term patent application is completed, except for a case where its designated patent application is rejected, cancelled, or deemed to be withdrawn. Note, however, that a request for registering a part obtained by broadening a corresponding feature that has been already disclosed is not accepted.
Short-term patent application can also be voluntarily amended before preparation for publication of registration of the short-term patent application is completed. Amendment should be made within the scope of disclosure of short-term patent application as originally filed.
- (a)-3 Causes for non-registration of a Patent Application
(1) simple discovery, scientific theory, mathematical method
(2) esthetic creative product
(3) plans, regulations and or methods for carrying out mental activities, games, or work
(4) computer programs itself
(5) simple provision of information
(6) methods for surgical or other treatments, as well as methods for medical examination regarding humans and animals (however, this no limitation on products, substances and compositions used for these methods)
(7) inventions that violate public order or morals through their publication or implementation
(8) essential biological methods related to varieties or the production of plants and animal (however, no limitation if these methods or their products are related to microorganisms)
- (b) Patent Application based on PCT International Application
Applicant can file an international application which has entered Chinese national phase as a standard patent application or a short-term patent application.
Further, Applicant can file, as a short-term patent application, an international application designated as a utility model application after the international application enters into the Chinese national phase.
In a case of filing as a standard application, Applicant is required to file a "request to record" (i) an international application published in Chinese within 6 months from the issue date (mailing date) of a notification of Chinese application number or (ii) an international application published in a language other than Chinese within 6 months from the date on which the international application is published in China.
In a case of filling as a short-term patent application, Applicant is required to request the recordation within 6 months after the international application enters the Chinese national phase or within 6 months from the mailing date of a notification of Chinese application number.
- (c) Exception to Loss of Novelty
Exception to loss of novelty can be applied to a patent application, in a case where the invention of the patent application is disclosed within 6 months retroactive to
(i) Standard application: the filing date of the designated patent application,
(ii) Short-term patent: the filing date application itself,by one of the following reasons:
"Exhibition" indicates the exhibitions defined in the "Convention on International Exhibitions" of Hong Kong.
- (d) Compulsory Licenses
After 3 years from the grant of a patent, anyone can file with the court a request for a compulsory license by predetermined reasons.
- (e) Renewal
Following the first three-year period of duration of a standard patent, the patent can be renewed on a yearly basis up to three months prior to the expiration of the period of duration. If the due date for renewal elapses, there is a six-month grace period in which it is possible to make late payment of the renewal fee (an additional fee is incurred for payment during the grace period).
Following the first four-year period of duration of a short-term patent, the patent can be renewed on a four-yearly basis up to three months prior to the expiration of the period of duration. If the due date for renewal elapses, there is a six-month grace period in which it is possible to make late payment of the renewal fee (an additional fee is incurred for payment during the grace period).
- (f) Remedy
A request for restoring a patent which has expired due to nonpayment of annual fee or nonpayment of annual fee during grace period can be filed within 18 months from the expiration date if there are reasonable grounds for nonpayment (fees for renewal and late payment apply).
- (g) Amendment/cancelation due to Opposition/Cancelation Trial
If a standard patent’s designated corresponding patent is amended or canceled due to patent opposition or cancelation trial proceedings at the designated patent office, a certified copy, etc. of the amendment or cancelation order must be submitted regarding the standard patent. Further, such an amendment will be effective retroactive to the date of registration of the patent. Such a cancelation causes the patent to be treated as if it never existed.
- (h) Employee Inventions
Inventions that were accomplished during normal work duty or during other specific work duty and that were logically expected as their result, as well as inventions for which an employee carried a specific obligation due the content of his job or due to a responsibility that derives of his job, are considered to belong to the employer.
An employee has the right to request reasonable compensation for registered patents of employee inventions or registered patents of non-employee inventions that belong to him, as well as reasonable compensation for profits that the employer makes from patents of employee inventions. After the aforementioned compensation has been carried out, the employee has the right to request reasonable compensation, if he assigns the rights of the said inventions belonging to him to the employer, or grants an exclusive license to the employer.
< 2 > Trademark
- Trademark application generally proceeds as below.
Filling of application
Examination on formality requirements
Search and examination ← Interview (optional)
Publication for opposition (within 3 months from the publication date)
- (a) Basic Matters
(i) Registrable Trademark: word (including person’s name), sign, design, English letter, font, numeral, graphic element, color, sound, smell, shape of and package of goods, and any combination thereof.
(ii) Designated Goods/Service Classification: designation of multiple goods or services is allowed in accordance with the Nice Classification.
(iii) Types of Trademark: standard trademark, collective trademark, certification trademark, and defensive trademark, etc.
(iv) Priority: Priority is given based on, e.g., an earlier trademark application filed in a member nation of Paris Convention or WTO (priority period: 6 months)
(v) Shortest Time required for Registration: Approximately 6 to 10 months (within 9 months in China)
(vi) Duration of Registration: 10 years from filing date. Renewal of registration is allowed every 10 years.
(vii) Division and Combination of Trademark: Allowed under the prescribed requirements.
- (b) Reason for Refusal (Office Action)
(i) Formality deficiencies: Amendment can be made within 2 months (unextendable) from the issue of a deficiency notice.
(ii) First Office Action: Response can be filed within 6 months from the issue of a First Office Action (opinion) (3-month extension is available, a request for an interview can be filed).
(iii) Second Office Action (Decision of Refusal): Second Response can be filed within 3 months from the issue of a Second Office Action (opinion) (3-month extension is available in a case where a time for response is required due to particular reasons such as appeal for invalidation, assignment/agreement, opposition, pending suit)
- (c) Opposition
Opposition can be filed within 3 months from the publication date of a published trademark.
An owner of a trademark right can file a "counter-statement" within 3 months from the mailing date of a notification of the opposition.
Opponent is required to submit evidence/material that support the opposition in the following manner:
(i) if the counter-statement is filed: within 6 months from the mailing date of the evidence/material regarding the counter-statement
(ii) if the counter-statement is not filed: within 9 months from the date on which the opposition is filed.
- (d) Revocation/Invalidation of Registration
A registered trademark can be revoked due to certain reasons (revocation of registration due to 3-year non-use etc.). Further, anyone can file with the court a request for invalidating a trademark.
- (d) Administrative Litigation
Against a decision or ruling made by the court, an appeal can be filed with the court within 28 days from the date of the decision or ruling.
- (e) Remedy
A request for restoring a registered trademark which has expired due to nonpayment of annual fee can be filed within 6 months from the expiration date.
< 3 > Design
- (a) Basic Matters
Registrable design must be a new design at the filing date or the priority date. The new design includes:
(i) a design of an article or a design of another article other than the article, which design has not been previously registered; and
(ii) a design which has been neither published nor disclosed in the Hong Kong SAR or any other regions.
Unregistrable design includes:
(i) a design which is not important in appearance;
(ii) a design which is contrary to public order and morality or prohibited by laws in Hong Kong; and
(iii) a computer program, a protected circuit configuration, literary works, and an article having an artistic characteristic.
The duration of a design is 5 years from the filing date. Renewal of registration is allowed every 5 years up to 25 years.
- (a-2)Divisional Application
A divisional application for a design that has been deleted by the amendment can be filed anytime while the original application is pending.
- (b) Priority
Priority can be claimed on the basis of an earlier design application filed in a member nation of Paris Convention or WTO (Priority period: 6 months).
- (c) Exception to Loss of Novelty
Exception to loss of novelty can be applied to the following designs:
(i) a design which was exhibited in an official international exhibition or a design which was exhibited in and after an official international exhibition within 6 months retroactive to the filing date or ;
(ii) a design which was disclosed within the scope of confidentiality, or a design which was disclosed by a third party without authorization of a creator of the design
- (d) Revocation/Invalidation of Registration
A request for revocation/invalidation of registration can be filed on the basis of certain reasons.
- (f) Others
Application for one or more designs can be filed as one design application in a case where these designs are for articles or a set of articles which belong to a same category based on the Locarno Classification (fees can be reduced).
< References >
Official website of the Intellectual Property Department of the Hong Kong SAR:
Information on Foreign Intellectual Property System and Intellectual Property Organizations (the Japan Patent Office):
|Chief of China Support Station
Chinese patent attorney
||OU SUN, born in 1977, majored in marine generator, marine electric engineering, Japanese-language teaching, and linguistics.
I want to consistently acquire new knowledge. New knowledge makes me find not only a new fact but also myself. I think it necessary to keep such attitude to cope with ever-changing society and world situation. With such attitude, I will offer every possible services to the clients from a broad perspective and wide technical fields.
China and Japan have been boosting cultural and scientific exchanges for a long time. I want to do my best to bridge China and Japan so that exchanges therebetween will further boosted.
|Osaka Legal Department Design Division Manager
||Majored in Course of Environmental Economics, Department of Economics, Faculty of Economics
With my experience as a paralegal in charge of various intellectual property-related services for overseas clients in our Secretariat and Administration Department for residents abroad since 2006, I will try my best to provide our clients with fine-tuned services to meet various demands through my daily works.