Practice Areas
COMMERCIAL LITIGATION
INTELLECTUAL PROPERTY
- Patents, Copyright, Designs, Trade & Service Marks and Passing-off, Confidential Information and Trade Secrets
- Preparation of Patent Specifications
- Registration of Patents, Trade & Service Marks and Designs in Hong Kong and overseas
- Infringement of Patents, Trade Marks, Designs and Copyright
- Proceedings before the Patent Office and the Trade Marks Office
- Licensing, Franchising and Character Merchandising
- Technology Transfer Agreements
- Distribution and Marketing Agreements
- Computer Software protection
- Anti-counterfeiting
- Parallel Imports - prevention of and action to stop parallel imports
Patents
Prior to the return of Hong Kong to Chinese sovereignty patent protection in Hong Kong was obtained by re-registration of a UK, or European patent, designating United Kingdom, in the territory, within 5 years of grant.
These patents enjoyed the same privileges and rights in Hong Kong as they enjoyed in the UK, so long as they remained in force in the UK. Thus patent protection was totally dependant on the subsistence of the UK patent. Hong Kong did not grant its own patents.
The new Patents Ordinance, which came into force on 27th June, 1997, empowered Hong Kong to grant its own independent patents for the first time. In addition to granting its own patents the Ordinance also allows for the grant of short term patents.
STANDARD PATENTS
Patents granted under the Ordinance are known as Standard Patents. Grant of a Standard Patent is based on registration in Hong Kong of patents which have been granted by certain designated patent offices. The designated offices at this time are the UK Patent Office, the European Patent Office, for patents designating the UK and the Chinese Patent Office.
Once the patent has been granted in Hong Kong it is independent of the original patent granted by the designated office. The patent is valid for 20 years and it can be rectified, amended, revoked, enforced and its validity can be tested in the Courts in Hong Kong in accordance with Hong Kong law.
The grant of patent is a two stage process. The first stage requires the applicant to record in the register the patent application published by the designated office and the second stage requires the applicant to register the patent granted by the designated office. The Hong Kong Patent Office only examines the application to ensure compliance with formalities, but does not carry out any substantive examination.
SHORT TERM PATENTS
Hong Kong now also grants short term patents for products or processes which are designed to protect inventions which have a short commercial life. These short term patents enjoy protection for a maximum period of 8 years and are available to any person.
Short term patents are granted with an examination as to formalities only and with no substantive search or examination before grant. An applicant must file a search report in relation to the invention made by an authorized searching authority. A short term patent will be granted once the formalities have been satisfied.
The validity of these short term patents can be tested through the courts and in any proceedings for the enforcement of a short term patent, the proprietor must establish the validity of the patent.
Contact Us
Tel: (852) 2509 · 0379
Fax: (852) 2709 · 0106
Email: [email protected]
