5. What should I note before making an application for a patent? What is the registration procedure?

5. What should I note before making an application for a patent? What is the registration procedure?

In Hong Kong, there are two types of patents: 

• Standard patents (with a maximum term of protection of 20 years); and
• Short-term patents (with a maximum term of protection for 8 years).

Other than the duration of protection provided, the application procedures for the two types of patents are also different. 

A standard patent can be obtained by either:

• Filing a standard patent application directly in Hong Kong without first filing the patent application in designated patent office (known as standard patent (O)); or
• Re-registering a patent granted by a “designated patent office” overseas (known as standard patent (R)) in Hong Kong. There are currently three designated patent offices: the State Intellectual Property Office of China, the United Kingdom Patent Office, and the European Patent Office (with the patent application designating the United Kingdom).

A short-term patent can also be obtained by making a direct application in Hong Kong without having to rely on any prior patent granted elsewhere. In contrast to standard patent, the short-term patent does not require substantive examination of the patentability of the invention. A short-term patent can be obtained much quicker than a standard patent and is most suitable for short-term products where a patent needs to be obtained quickly for protection.

For either type of patent, you must make full disclosure of the details of the invention in your application, otherwise your application will be rejected. Furthermore, for a patent to be granted, the invention must satisfy three main requirements (section 9A of the Patents Ordinance):

• The invention is susceptible to industrial application. That is, it can be made or used in any kind of industry;
• The invention is new. This generally means that the invention was not known to anyone anywhere in the world before the patent application was filed; and
• The invention involves an inventive step (novelty). This generally means that at the time the patent application was filed, the invention was not obvious. 

Applying for a patent requires careful drafting of the patent application. Poor drafting may result in a business loss or litigation with other patent owners. Although it is not a legal requirement, you are strongly advised to employ a patent agent or a lawyer to help you write the patent specification, and to communicate with the relevant patent office on your behalf. This is particularly so if you wish to apply for a patent overseas (which is a necessary prior step for obtaining a standard patent (R) in Hong Kong). For more details on patent applications in Hong Kong, please go to the website of the Intellectual Property Department.