Introduction
In recent decades, many companies worldwide have chosen to manufacture their products in mainland China for commercial reasons. However, this comes with the risk of counterfeit products or unauthorized sales. While most companies understand the importance of securing patent rights in mainland China, they often overlook the significance of protecting their rights in Hong Kong. This article explains why obtaining patent protection in Hong Kong should always be considered.
The Hong Kong Patent System
Hong Kong is a separate jurisdiction from mainland China, and patent rights registered in mainland China do not automatically extend to Hong Kong. To secure patent protection for your inventions in Hong Kong, a separate application must be filed.
1. Parallel Application System
Traditionally, applicants had to first file a patent application in one of the three designated patent offices: China National Intellectual Property Administration (CNIPA), the European Patent Office (EPO) for patents designating the United Kingdom, or the United Kingdom Patent Office. Under this “re-registration” route, applicants would then request the application to be recorded in Hong Kong within 6 months of the designated patent’s publication and subsequently request registration and grant within 6 months of the designated patent’s grant.
In 2019, a new original grant patent (OGP) application system was introduced. The Hong Kong Patent Registry conducts substantive examination instead of merely “re-registering” a designated patent. The OGP system and the “re-registration” system run in parallel.
2. OGP or Re-Registration
As the OGP system is still in its early stages, the Hong Kong Patents Registry may not have a panel of examiners for all types of inventions. Currently, examination work may be outsourced to CNIPA examiners. While CNIPA examiners focus on technical opinions regarding novelty and inventive step, examiners at the Hong Kong Patent Registry consider these opinions during the substantive examination process and issue office actions.
Although this arrangement allows time for the Patent Registry to recruit and train examiners with technical expertise, it presents potential problems. These include prolonged examination time due to collaboration between Hong Kong and CNIPA examiners, conflicts between examination standards, and the language difference between English filings in Hong Kong and Chinese examination practices at CNIPA. Despite these differences, the examination standards related to technical aspects and the number of objections issued are likely to be similar between CNIPA and OGP applications in Hong Kong. Consequently, the costs involved in prosecuting the patent applications will also be similar.
Instead of directly applying for patent registration via the OGP system, it may be advisable for businesses to pursue patent protection in Hong Kong through the traditional “re-registration” route. They can achieve this by first filing an application for their patent in mainland China with CNIPA and then re-registering the application in Hong Kong. Since the Hong Kong Patent Registry does not perform substantive examination for applications made under the “re-registration” route, the costs involved are limited to attending to the formalities. In fact, only in rare situations would businesses seek patent protection exclusively in Hong Kong without considering mainland China. Even most local Hong Kong businesses eventually explore the Chinese market and engage Chinese factories for product manufacturing.
Advantages of Patenting in Hong Kong
Apart from the low costs and simplicity of re-registering patents in Hong Kong, there are practical reasons for companies to vigorously pursue patent protection in the region.
1. Hong Kong as a Trading Hub
Despite its relatively smaller domestic market, Hong Kong serves as a leading international trading hub. The city hosts numerous international trade shows, providing trading companies with opportunities to exhibit their new products or inventions. Having registered patent rights in Hong Kong allows businesses to conveniently enforce those rights against international traders exhibiting infringing products at these events, disrupting their ability to market such infringing products.
Moreover, Hong Kong’s port is one of the largest in the world, particularly in Asia and the Greater China region. Chinese manufacturers often export goods through Hong Kong for logistical and commercial reasons. Importing and exporting infringing goods in and out of Hong Kong constitutes patent infringement under Hong Kong patent laws. Securing patent rights in Hong Kong enables patent holders to take action against any infringing goods imported into Hong Kong.
2. Infringers in Hong Kong
While domestic patent infringements are not prevalent in Hong Kong, there has been an increase in “professional” infringers from mainland China or elsewhere. These infringers establish Hong Kong companies to conduct their infringing activities due to the low costs and simple company incorporation process. Patent right holders can rely on their patent rights in Hong Kong to combat infringement activities conducted by these companies effectively.
In summary, it is advisable for companies, particularly those planning to secure patent rights in mainland China, to extend their patent protection to Hong Kong. This is especially true considering that the official fees and costs involved in re-registering a patent in Hong Kong are significantly less than in other jurisdictions that conduct substantive examination. As infringers in mainland China become more sophisticated, patent right holders should maximize the scope of protection and enforceability of their patent rights. Re-registering their patents in Hong Kong is one of the most cost-effective strategies that all applicants should consider.
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