Hong Kong

Hong Kong overview

Hong Kong intellectual property system

Patent

Standard patent application system

Based on a patent registered by a patent office in China, Europe, or the United Kingdom (hereinafter referred to as the subject patent), you can apply for a standard patent within six months from the date of registration. The specific procedure requires the following steps.
(i) With respect to an application published by any of the above three offices and seeking patent protection in Hong Kong (hereinafter referred to as the "Target Application"), file a "request for recording" within six months from the date of publication;
(ii) A ``Request for Registration'' must be filed within six months from the date the subject application is registered as a patent by one of the three offices mentioned above.
　The basis for claiming priority is the earlier application filed in a country that is a member of the Paris Convention, but it is possible to claim priority even if specific requirements are met (Article 98 of the Ordinance).
　The term of a standard patent is up to 20 years from the filing date of the subject application.

　For standard patents, patent registration can also be applied for divisional applications of the subject application or subsequent applications of the subject application in which new configurations have been added. However, a request for registration of an expanded portion of a corresponding configuration that has already been disclosed will not be accepted.

　Standard patents can be amended voluntarily. The timing of amendment is after publication of the subject application and before the standard patent registration is granted. Amendments must not exceed the scope of the original disclosure and must be consistent with the amendments made to the subject application.

　An application for a standard patent shall be maintained on the fifth anniversary of the publication of the request for recording, or by the expiration of that period if the application is maintained on the fifth anniversary of the same day as the application date of the following year. You will need to apply for this and pay the maintenance fee (you can apply for maintenance from 5 months before the expiry date).

　Even after the expiration of the above period, maintenance fees can be paid later within 6 months (additional fees apply). Even after the late payment period has passed, if there are reasonable grounds, you can apply for restoration within 12 months from the date of the decision to withdraw the application for the standard patent.

　However, if a decision is made to withdraw/reject the subject application, or if six months have already passed from the patent registration date of the subject application, the application for maintenance will be rejected.

Short-term patent application system

　You can apply for a short-term patent based on a search report issued by any of the International Searching Authorities, the Chinese Patent Office, the European Patent Office, or the British Patent Office. Generally, there is no application deadline.
　If you claim priority, you must apply for a short-term patent within 12 months of the first priority date. The basis for claiming priority is an earlier application filed in a Paris Convention member country or a WTO member country, or a short-term patent filed earlier in Hong Kong.

　The term of a short-term patent is up to eight years from the filing date (application date). Additionally, a request for postponement of the registration of a short-term patent can be requested (Article 8 of the Ordinance).

　Short-term patents can be divided before the preparation for publication of registration is completed, except in cases where the subject application is refused, canceled, or deemed cancelled. However, a request for registration of an expanded portion of a corresponding configuration that has already been disclosed will not be accepted.
　Short-term patents can also be amended voluntarily. The timing of the amendment is before the preparation for the registration publication is completed. Amendments must not go beyond the scope of the original disclosure.

Reasons for non-registration of patent

① Mere discovery, scientific theory, mathematical method
②Aesthetic creations
③ Plans, rules, or methods for performing mental activities, games, or activities.
④The computer program itself
⑤Just providing information
⑥ Surgical treatment or treatment methods for the human body or animal body, or diagnostic methods thereof (however, this does not apply to the products, substances, and compositions used in such methods)
⑦Inventions whose publication or implementation would be contrary to public order and morals
⑧ Essential biological methods related to animal and plant varieties or production (however, this does not apply to microorganism-related methods or their products)

★New patent system will start operating from December 2019, 12

　Under the old system, there are standard patents (duration of 20 years) and short-term patents (duration of up to 8 years, equivalent to Japanese utility models). Standard patents are also called "re-registered patents," and patents registered in China, the UK, and Europe (designated by the UK) can be registered as standard patents in Hong Kong.
　Under the new system, in addition to "re-registered patents", "Original Grant Patent (OGP)" will be added to the standard patent system, and it will also be possible to file an original grant standard patent application in Hong Kong.

(Overview of the original patent standard patent system)
・Applicable to: Standard patent applications (PCT route is not possible)
・Priority claim: Possible
・Flow of main procedures: Application (3 years for requesting examination) → Formality examination → Publication (18 months) → Substantive examination
・Divisional application: Possible
・Information provision: Possible (after application publication)

(Main flow of substantive examination procedures for original standard patents)
・OA response period is 4 months. Can be extended for 2 months.
・The period for submitting a request for reexamination is two months. Can be extended for 2 months.
・A written opinion can be submitted within two months in response to the reexamination opinion (two-month extension possible).
- If the reasons for refusal are resolved, a decision to grant a patent will be issued; if the reasons for refusal are not resolved, a final notice of refusal will be issued.

(Short-term patent revision points)
- Petition for substantive examination after ratification (interested party)
・Relaxation of the number of independent claims (upper limit 1 → 2)

　As of June 2021, the first standard patent based on the "Original Author Standard Patent System" has been granted (registration after an examination period of less than 6 months from the application date).
　As of May 2021, a total of 5 original standard patent applications have been filed, of which 426% (33) were filed by applicants within Hong Kong, and 142% (67) were filed by applicants outside Hong Kong. is.

Patent application based on PCT international application

　For international applications that designate China as a country, you can apply for a standard patent or short-term patent after entering the Chinese domestic phase. In addition, an international application designated as a utility model can be applied for as a short-term patent after entering the Chinese domestic phase.
　When applying for a standard patent, if the application was internationally published in Chinese, within 6 months after the notification of assignment of Chinese application number was sent, if the application was internationally published in a language other than Chinese, A "request for records" must be made within six months from the date of publication in China.
　When applying for a short-term patent, it is necessary to apply for registration within 6 months after entering the Chinese domestic phase or within 6 months after the notification of granting a Chinese application number is sent.

Exception to loss of novelty

　For inventions published within 6 months from the filing date of the subject application for standard patents or from the filing date for short-term patents, novelty will be lost if the publication is due to any of the following reasons: exceptions may apply.
(i) Obvious abuse of the invention to the applicant or inventor
(ii) public exhibition through official or sanctioned international exhibitions;
Exhibition refers to an exhibition stipulated in Hong Kong's International Exhibition Commitment.

Compulsory implementation permission

　Three years after the patent is registered, any person can apply to the court for permission to exploit the patent for specified reasons.

NEW

　After the initial three-year term, standard patents can be renewed in one-year increments starting three months before the expiry of the term. Even after the renewal deadline has passed, additional payment is possible within 6 months (additional fees apply).
　After the initial four-year term, short-term patents can be renewed in four-year increments starting three months before the expiry of the term. Even after the renewal deadline has passed, additional payment is possible within 6 months (additional fees apply).

Relief

　If a patent expires at the expiration of the term due to non-payment of pension/non-payment of pension, if there is a reasonable reason, you can apply for restoration within 18 months from the date of expiration (renewal fee + late payment fee applies).

Amendment/cancellation by opposition/cancellation trial

　If a standard patent has its corresponding designated patent amended/cancelled through opposition/cancellation trial proceedings at a designated patent office, a certified copy of the amendment/cancellation order must be submitted for the standard patent. The effect of the amendment shall be retroactive to the date of patent registration. As a result of such revocation, the patent is deemed to have never existed from the beginning.

employee invention

　Inventions that were made in the performance of normal or other specific duties and whose results were reasonably expected to result, and inventions for which the employee had specific duties due to the nature of the job and the responsibilities derived therefrom, must be submitted to the employer. considered to belong.
　Employees have the right to claim the patent registration of service inventions or non-service inventions belonging to them, and to demand just compensation for the benefits derived from the service invention patents that accrue to the employer. After the above compensation has been made, if the employee transfers or grants an exclusive license to the employer the rights to the invention that belong to him, he has the right to demand appropriate compensation.

商標

Trademark registration in Hong Kong generally follows the steps below.

　application
　　↓
　Examination of formal requirements
　　↓
　Investigation and examination ← Hearing (optional)
　　↓ ↓
　Public notice/objection period (within 3 months from the date of public notice)
　　↓
　Registration

Basics

(i) Registration targets: characters (including people's names), symbols, design styles, alphabetic characters, fonts, numbers, graphic elements, colors, sounds, smells, product shapes and packaging, or combinations thereof.
(ii) Designated product/service classification: Multiple designations are possible according to the Nice classification.
(iii) Trademark types: general trademark, collective trademark, certification trademark, defensive trademark, etc.
(iv) Priority rights: Priority rights based on earlier trademark applications filed in Paris Convention member countries or WTO member countries (priority period: 6 months)
(v) Minimum time to registration: approximately 6 to 10 months (*within 9 months in China).
(vi) Duration of registration: 10 years from the filing date. Renewable every 10 years.
(vii) Splitting or merging trademarks: Possible, but subject to meeting prescribed requirements.
(viii) Rights-free system: Exclusive rights to non-distinctive parts of a trademark can be waived voluntarily or in response to reasons for refusal.
(ⅸ) Consent system: If a letter of consent is submitted by the cited trademark right holder, the reason for refusal will be resolved.

Reason for refusal

(i) Formal deficiencies: Amendments can be made within two months after the notice of amendment is issued (no extension possible).
(ii) First refusal: You can respond within 6 months after the notice of reasons for refusal is issued (extendable for 3 months, request for hearing possible).
(iii) Re-rejection (decision of refusal): You can respond again within 3 months after the notice of reasons for refusal is issued. (If applicable, it can be extended for 3 months).

・Main absolute reasons for refusal (Article 11)

　① Non-distinctive trademark
　②Trademark consisting only of a descriptive mark
　③Commonly used trademark
　④Trademark consisting only of the shape derived from the nature of the product itself
　⑤Trademarks that harm public order
　⑥Trademark filed in bad faith
　⑦ Trademarks whose use is prohibited in Hong Kong by law

・Main relative reasons for refusal (Article 12)

　① A trademark that is the same as the earlier application trademark and designates the same designated goods or services.
　② A trademark that is the same as the earlier application trademark, designates similar designated goods or services, and its use causes confusion among the public.
　③ A trademark that is similar to the earlier application trademark, designates the same or similar designated goods or services, and its use causes confusion among the public.
　④ A trademark that is the same as or similar to the earlier trademark, which is protected as a well-known trademark under the Paris Convention, and if the later trademark is used without justifiable reason, it will not affect the prominence or reputation of the earlier trademark. If it will have an undue influence on
　⑤ The transaction involves a mark that is prohibited from use in Hong Kong under the Counterfeit Goods Act, or whose use is prohibited under pre-existing rights, particularly copyright or the Registered Designs Act.
　 *④⑤ will not be rejected unless the owner of the prior trademark files an opposition.

Registration opposition

Any person may file an opposition to registration within three months of the publication of the application. The period for filing an opposition can be extended by up to two months upon request, and the filing of an opposition can be based on relative grounds for refusal.
The objected party may submit a "counterstatement" within three months after the notice of opposition is served, and the objector may serve evidence/materials related to the counterstatement if there is a counterstatement. Evidence/materials supporting the grounds for opposition must be submitted within 3 months from the date of filing the opposition, or if there is no counter statement, within 6 months from the date of filing the opposition. If no evidence is submitted by the opposing party, the motion will be deemed abandoned. A hearing will also be held upon request. If you are dissatisfied with the objection decision, you can appeal to the court of first instance.

Petition for invalidation of trademark registration

Any person may petition the registration examiner or the court of first instance to invalidate a trademark registration based on absolute grounds for refusal, relative grounds for refusal, or both.
When filing a petition for invalidation, the invalidation requester must clearly state the reasons for invalidation. A petition for invalidation can be filed for each designated product/service related to a registered trademark.

Cancellation of non-use

If the registered trademark has not been used for designated goods/services by the trademark right holder or a person with his or her consent in Hong Kong for at least three consecutive years, and there is no reason for such non-use. , any person may request the registration examiner or the court of first instance to cancel a registered trademark.
Non-use cancellation requests can be made for each designated product/service.

Administrative litigation

　If you are dissatisfied with the decision or award, you may file a lawsuit in court within 28 days from the date of the decision or award.

Relief

　Registrations that have expired due to non-payment of pension may apply for reinstatement within six months from the date of expiration.

design

Basics

　The design must be new as of the filing date or priority date. What is a new design?
(i) a design that has not been previously registered for the article or any other article;
(ii) Refers to designs that have not been previously published or exhibited in the Hong Kong Special Administrative Region or any other region.
　Items that are not subject to registration are:
(i) Designs whose appearance is not important;
(ii) designs that are contrary to public order or morality or prohibited by Hong Kong law;
(iii) is a design of a computer program or protected circuit layout, literary work or article of artistic character;
　The registration is valid for 5 years from the filing date. It can be renewed every five years for a maximum of 5 years.

segmentation

　A design deleted by amendment can be divided at any time during the pendency of the original application.

priority

　You can claim priority based on an earlier design application filed in a Paris Convention member country or a WTO member country (priority period: 6 months).

Exception to loss of novelty

　Exceptions to loss of novelty can be applied to designs that fall under any of the following:
(i) exhibited at or subsequently exhibited at a formal international exhibition within six months prior to the date of application of the design;
(ii) Items that have been shown within the scope of confidentiality or items that have been shown to others by another person against the will of the designer.

Cancellation/invalidation of registration

　You can apply for registration cancellation/invalidation for specified reasons.

Others

　For similar articles or sets based on the Locarno classification, one or more designs can be filed as one application (fees may be reduced or exempted).

Reference source