Hong Kong's New Original Grant Patent (OGP) System
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.1 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, provide 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.
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This article is co-authored by Anna Lau.