2. What should I note before making an application for a patent? What is the registration procedure?
Apart from the difference in the duration of protection provided by the standard patent and the short-term patent, there is a difference in the application procedure for the two types of patent. A standard patent is obtained by registering with the Registrar of Patents in Hong Kong (who is the Director of Intellectual Property) a patent granted by a "designated patent office" overseas. Currently, there are three designated patent offices under the Ordinance: 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).
If, for example, an invention is made in Australia and the inventor applies for and receives a patent in Mainland China (in addition to Australia ), the inventor still has to apply for a separate patent in Hong Kong in order for the patent to be enforceable in Hong Kong .
In short, to apply for a standard patent in Hong Kong (with a maximum term of protection of 20 years), one must first apply for a Chinese patent or a United Kingdom patent. If a Chinese patent or a United Kingdom patent is granted, the patent owner can register it as a standard patent in Hong Kong and thereby enjoy the protection conferred by the Patents Ordinance in Hong Kong .
In contrast, a short-term patent (with a maximum term of protection for 8 years) can be obtained by direct application to the Registrar of Patents in Hong Kong without having to rely on any prior patent granted elsewhere.Thus, a short-term patent can be obtained much more quickly than a standard patent. A short-term patent is most suitable for short-term products which, by their nature, can only be adequately protected if a patent can be obtained quickly.
A patent is granted in return for full disclosure of the details of the invention in question. Thus when applying for a patent, whether it is a standard or a short-term patent, you must provide a sufficiently clear and complete disclosure of the invention in the application. If this requirement is not met, the application will be rejected. Furthermore, for a patent to be granted, the invention must satisfy three main requirements :
- The invention is susceptible to industrial application. That is, it can be made or used in any kind of industry (section 97 of the Patents Ordinance).
- 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 (section 94 of the Patents Ordinance).
- The invention involves an inventive step (novelty). This generally means that at the time the patent application was filed, the invention was not obvious. (section 96 of the Patents Ordinance).
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 in Hong Kong). For more details on patent applications in Hong Kong , please go to the website of the Intellectual Property Department.