Hong Kong Original Grant Patent System

This article is co-authored by Stefan Schmierer and Anna Lau

The Hong Kong Original Grant Patent System represents a significant development in Hong Kong’s patent framework, offering a direct route for inventors and businesses to seek standard patent protection locally. Introduced as part of broader reforms to modernise the intellectual property regime, the system is intended to support innovation, enhance patent quality, and improve accessibility for applicants seeking patent protection in Hong Kong.

1. New System Aims to Encourage Innovation

The Original Grant Patent (“OGP”) system was launched in December 2019 as a reform measure that encourages innovation and IP trading in Hong Kong. We welcome this change in the law to better protect inventions.

2. Patents Protect Inventions

Patents prevent inventions of patent owners from being manufactured, used, sold, or imported without the owners’ consent. These inventions can be from any sort of industry, such as electrical appliances, machines, computer software or a method for curing a disease.

3. OGP Simplifies Application Procedure

The OGP system has allowed registration of patents in Hong Kong while the “standard patent by re-registration” remains an alternative.

The traditional standard patent has been renamed “standard patent by re-registration”. Previously, to obtain a standard patent for a maximum term of 20 years, patent applicants were required to file their applications with one of the designated offices outside Hong Kong:

• the State Intellectual Property Office of the People's Republic of China; or

• the European Patent Office, in respect of a patent designating the United Kingdom; or

• the United Kingdom Patent Office.

This requirement has been removed by the introduction of the OGP system, providing patent applicants the option to directly file standard patent applications in Hong Kong. A patent application under the OGP system will be assessed on two grounds:

(1) formality of filing necessary information and documents;

(2) the substantive requirement of patentability, for example, whether such an invention is new, involves an inventive step and is industrially applicable.

For short-term patent protection for a maximum term of 8 years, the reform increased the maximum number of independent claims per application from one to two.

4. OGP Introduces Cheaper E-Filings

Following the launch of the Final Phase of the New Integrated IT System (NIS), e-filing has become an available option.

The e-filing fees of both standard patents and short-term patents are lower than the paper filing fees.

5. Changes to Short-Term Patent System

Under the new patent system, refinements have been made to the short-term patent system. As stated previously, two independent claims may be filed under one application. If any party wishes to commence enforcement action, there is a prerequisite request that must be fulfilled:

• a short-term patent proprietor or a third party who has reasonable grounds or a legitimate business interest may request the Registrar of Patents to conduct a substantive examination of the patent, i.e. the underlying invention.

Any party or person who threatens another person with infringement proceedings relating to a short-term patent that is unexamined must do the following:

• upon request by any party aggrieved by the threat, provided that aggrieved party with adequate information that would allow them to identify the patent.

  
  

If the party providing the information fails to satisfy the above requirement, the aggrieved party is likely to be entitled to relief.

6. Prohibited Titles and Descriptions

There exists a prohibition on the use of certain titles and descriptions relating to patent practice. A person may not make use of confusing or misleading titles or descriptions such as “registered / certified patent attorney” and “certified / registered patent agent”. However, one can use a description or title which clearly delineates an individual’s qualification regarding their provision of patent agency services outside of Hong Kong.

7. OGP System Has 4 Key Benefits

There are four key benefits of the new patent system:

1. reduction in patenting costs and time in obtaining a standard patent;

2. flexibility in filing as patent applicants can choose from either the OGP or re-registration;

3. enhanced system integrity through the introduction of post-grant substantive examination which safeguards against any potential abuse of the short-term patent system;

4. facilitating the development of Hong Kong by promoting local innovation and attracting foreign enterprises to set up research and development operations in the region.

8. New System Reduces Time and Costs

As the new OGP system will significantly reduce the time and costs associated with filing a standard patent application, individuals and companies should benefit from the flexibility of the new system and in obtaining patent protection.

How Ravenscroft & Schmierer Can Help?

Ravenscroft & Schmierer advises individuals and businesses on the legal framework governing the Hong Kong Original Grant Patent System, including its interaction with the standard patent by re-registration route and the short-term patent regime. The firm provides guidance on procedural requirements, system characteristics, and regulatory considerations relevant to patent protection in Hong Kong.

Readers seeking clarification on how the OGP system operates in practice may contact us for further information.

FAQ: Hong Kong Original Grant Patent System

What is the Hong Kong Original Grant Patent System?

The Hong Kong Original Grant Patent System allows applicants to apply directly for a standard patent in Hong Kong without relying on re-registration of an overseas patent.

When was the Original Grant Patent system introduced?

The OGP system was launched in December 2019 as part of reforms to Hong Kong’s patent laws.

How is a patent application assessed under the OGP system?

Applications are examined for formality requirements and substantive patentability, including novelty, inventive step, and industrial applicability.

What is the difference between the OGP system and standard patent by re-registration?

The OGP system permits direct filing in Hong Kong, while standard patent by re-registration relies on patents granted by designated overseas patent offices.

Does the OGP system apply to short-term patents?

The reforms accompanying the OGP system introduced changes to the short-term patent regime, including allowing two independent claims per application.

Is substantive examination required for short-term patent enforcement?

A request for substantive examination must be made before enforcement action relating to a short-term patent.

Are certain patent-related titles restricted in Hong Kong?

Yes, the use of misleading titles or descriptions connected to patent practice is prohibited under Hong Kong law.

Can Ravenscroft & Schmierer explain how the OGP system works?

Ravenscroft & Schmierer provides informational guidance on the structure and operation of the Hong Kong Original Grant Patent System.

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Whilst every effort has been made to ensure the accuracy of this article it is general in nature and does not constitute legal advice of any kind. You should seek your own personal legal advice before taking legal action. We accept no liability whatsoever for loss arising out of the use or misuse of this article.

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