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Proposed Changes to the
Hong KongPatent SystemIn 2011 the Hong Kong Government instructed an Advisory Committee (AC) to conduct a review of the Hong Kong patent system. The consultation period ran from October to the end of 2011, soliciting input from the patent and general legal profession, academia, political organizations and trade bodies.On 7 February 2013 the AC issued its formal Report (read it if you dare – it’s 209 pages long) recommending a number of changes to the system which will affect not only local patentees but the entire patent profession. In general, the AC’s Report recommends three changes which can be described as being quite bold in some areas, while conservative as the changes permit much of the existing system to be retained.The AC’s recommended changes fall into three categories: the introduction of an “original grant patent” (OGP), the refinement of the short term patent system and the introduction of a regulatory framework for the Hong Kong Patent profession, which at present is not regulated.Original Grant PatentThose familiar with the Hong Kong Patent system will know that a European (EPO), British (GB) or Chinese (CN) patent is effectively re-registered in as a Hong Kong standard patent without any further substantive examination. In view of this existing arrangement, the Report recommends that the Hong Kong Intellectual Property Department (IPD) should proceed to implement its own examination hub so that patentees can apply and prosecute a Hong Kong patent without having to first file a EPO, GB or CN patent. The Report did comment on the difficulties in establishing a high quality examination hub, but did suggest that the examination should be outsourced in the interim, with a natural selection being the State Intellectual Property Office (SIPO).Despite these bold changes, the committee also recommended keeping the present re-registration system. Thus patentees who would only be interested in obtaining a Hong Kong patent, but would not otherwise be interested in obtaining a European, British, or Chinese patent will benefit the most from this change.Short Term Patent RefinementThe short term patent is separate from the HK standard patent, and is like a utility model in some ways. It lasts 10 years, maximum, and has no substantive examination procedure. In some cases, patentees use the short term patent just to receive a filing date, in a manner similar to a US provisional patent.The refinement of the existing short term patent system introduces a substantive examination to the system so as to reduce the risk of unjustified threats of infringement by patentees. Currently there is no requirement that a short term patent be examined before infringement proceedings can begin. In view of the present arrangement, the Report recommends that substantive examination should be introduced to the short term patent process before the threat or commencement of infringement proceedings be allowed to take place.Patent Attorney Regulatory FrameworkCurrently anyone, regardless of their qualifications, may file documents in the HK Patent Office, and may call themselves a patent attorney or patent agent. The Report recommends that there be an official organization designated to regulate this activity, at least in the areas of patent drafting and prosecution as well as the usage of the title of “Patent Attorney” or “Patent Agent”. It is expected that there will be some type of grandfather provision allowing existing patent attorneys and patent agents to continue to practise or be recognized under the new regulatory system, although the details of this are as of now, unclear.Flexible, but ...The changes outlined in the report are significant in that additional options and flexibility will be available to patentees interested in protecting their inventions. At the same time, the proposals will not alter the existing re-registration system which has, according to the AC, been very cost-effective for Hong Kong patentees. Obviously the challenges of implementing an effective and high quality examination hub as well as the details regarding the future regulation of the profession have not yet been resolved at this stage of the recommendation process. We expect that these details will emerge over the next year or so.