Hong Kong looks at patent law reform

Last year the Hong Kong Government issued a consultation paper on patent law reform.  The submission period ended on 31 December 2011.

Original grant patent system

Hong Kong’s current re-registration system doesn’t suit locals with limited resources who only want Hong Kong patent protection.  Such applicants are forced to obtain patent protection in a designated office outside Hong Kong in order to re-register in their own country.

One of the issues under consideration is whether Hong Kong should introduce an ordinary patent system.  In the paper they give it the rather awkward acronym of OGP (“original grant” patent) system.


Merits of establishing an OGP system

The OGP system would apparently allow inventors who do not need a patent elsewhere to apply direct in Hong Kong.  This may provide convenience and help save costs for inventors who wish to apply for a patent in Hong Kong alone.

It is intended to complement the efforts being made to encourage more entrepreneurs to use Hong Kong as a launching pad for their research and development businesses.  That may in turn help fortify the further development of Hong Kong as a regional innovation and technology hub.

The OGP system may result in more patent applications being filed in Hong Kong direct.  This has the expected benefits of:

• stimulating the growth of patent agency business in Hong Kong
• helping build up local expertise in drafting and prosecuting applications for patents, and
• offering added career opportunities for graduates with science and technical background.

Drawbacks of establishing an OGP system

An OGP system would not help those of us who are just interested in re-registration.  We are already filing in China, Europe or the UK and simply want to extend coverage to Hong Kong.

One solution is to maintain the OGP system and the re-registration system in parallel.  However, this would entail extra cost in maintenance, which will be passed onto users and may make the whole thing less attractive/viable.

In-house substantive examination, in contrast to re-registration, will require the patent office to maintain a large team of examiners and the development and maintenance of a comprehensive technical database for assessing whether an invention is novel and whether it involves an inventive step.

For a small market like Hong Kong, in-house substantive examination may not be viable or cost-effective, as it is likely to result in very high registration fees.

Outsourcing substantive examination

The report acknowledges that introducing in-house substantive examination straight away is not an option.  A more viable short to medium term solution is to outsource substantive examination.

The Hong Kong Patents Registry will do a formality check before sending the application to another patent office for substantive examination.  The Registry will consider the examination report prepared by the outsourced examination authority and then decide whether to grant the patent or not.

Expanding the re-registration system

There are currently three designated offices under the existing re-registration system.  These are the SIPO (Chinese State Intellectual Property Office), the UK Intellectual Property Office and the European Patent Office (for patents designating the UK).

One option is to expand the list of designated offices.  Singapore’s list of designated offices, for example, includes Australia, Canada, Japan, New Zealand, Korea, the UK, the US and the EPO.

There are drawbacks if Hong Kong follows this model.

The paper notes that if the number of designated patent offices is increased, differences in the patent laws of different countries, particularly in respect of patentability standards, the interpretation of claims, as well as the ambit of protection could result in inconsistencies which may be hard to reconcile.

This observation seems to have been lost on New Zealand and Australian politicians and officials who are currently pursuing a single examination system between the two countries despite differences in the law.  I have discussed joint examination in an earlier blog post.

Chinese extension

I don’t claim to be an expert in the relationship between China and its neighbours Hong Kong, Taiwan and Tibet.

So, speaking as an outsider, it seems strange to me that the report does not even mention the possibility of Chinese patents automatically extending to Hong Kong.  That would certainly be advantageous to global users of the patent system.

I guess there are some local sovereignty issues to take into account.

Further steps

We’ll watch with interest what that Hong Kong Government decides to do and to what extent they will be guided by submissions.

If I had to make an informed guess, I would say that the Hong Kong Government will introduce an OGP system with outsourced examination and retain the re-registration system in its current form.

Photo courtesy of author Patrick Rasenberg under Creative Commons licence.