INTRODUCTION Contributed by: Andreas von Falck, Hogan Lovells International LLP
A new patent system was introduced in Hong Kong at the end of 2019 providing a direct route to seek 20-year patent protection by means of original grant patents (OGPs). As at 30 Novem- ber 2023, around 810 applications for OGPs had been filed at Hong Kong’s Intellectual Property Department (IPD) and around 80 OGPs had been granted, some within less than 18 months of fil- ing. The alternative route in Hong Kong for obtain- ing 20-year invention patent protection requires a patentee first to obtain a UK, European (UK) or Chinese patent (“designated patents”) and then re-register the designated patent at the IPD without the need for any local substantive examination. The re-registration route operates in parallel with the OGP system, so patent appli- cants can choose between the OGP system or re-registration. In the 11-month period to the end of November 2023, over 16,400 applications were filed to re-register designated patents and around 9,750 patents were granted using the re-registration route. However, the IPD wants there to be potential advantages in using the OGP route. For example, if an applicant agrees not to request any amendments and requests early publication of the application, and if the application progresses smoothly, the entire pro- cess to grant may be completed in around 12–18 months. Further, under an IPD pilot scheme an OGP applicant can request the deferral of the formality examination for a period of up to 12 months from the filing or priority date. The effect of this scheme has some similarities to a US provisional patent application and allows an applicant to establish an early filing date with- out having to file claim(s), giving applicants more time to assess the patentability and commercial potential of their invention. Such requests are granted at the Registrar’s sole discretion and must satisfy certain requirements. If a request is
granted, the processing of the OGP application will be suspended during the deferral period. The Hong Kong High Court IP specialist list was set up in 2019 with a small number of designated judges who can hear patent and other IP cases. The intention of the IP specialist list is to have more judge-led case management, to improve the level of judicial expertise for dealing with IP cases and to increase efficiency in – and there- fore accelerate – IP litigation. New procedural court rules for patent and other IP cases are expected to be introduced soon. China’s 14th five-year plan (2021—2025) affirms the Chinese government’s support for the future development of Hong Kong in a wide spectrum of areas, including developing Hong Kong into a regional IP trading centre, an international innovation and technology hub, and as a lead- ing centre for international legal and dispute resolution services in the Asia-Pacific region. The Hong Kong government wants to leverage Hong Kong’s advantages in international finan- cial, legal and dispute resolution services within China’s Greater Bay Area (GBA), which covers Hong Kong and Macao, as well as nine major cities in mainland China including Guangzhou and Shenzhen, the home of many Chinese tech- nology companies. Over the last twelve months a number of large IP-related international arbitra- tions have taken place in Hong Kong, in some cases involving Chinese electronics manufactur- ers. At the end of January 2024, a comprehen- sive new mechanism will come into force for the reciprocal recognition and enforcement of judg- ments in civil and commercial matters between Hong Kong and mainland China. Although pat- ent infringement and validity judgments are not covered by this arrangement, once the arrange- ment comes into force on 29 January 2024 judgments issued in disputes, such as those for
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