Who, When and What To File For Short-term Patents

Before an applicant can be granted a short-term patent in Hong Kong, he must file a search report in one of the designated patent office discussed in another article. The short-term patent application itself should be made with the attached documents, usually standard forms, and other information required by Hong Kong’s patent laws.

Who Can Apply?

Owners of inventions, whether processes or products, can submit for a Hong Kong patent application. This is true whether the inventor is a resident and/or citizen of Hong Kong for as long as the other legal requirements are met.

The grant of a Hong Kong patent gives the patent holder exclusive rights to the process or product covered within Hong Kong. However, the coverage doesn’t apply to other countries and territories outside of Hong Kong, not even in the People’s Republic of China.

Keep in mind that there are specific requirements regarding who should be named in the patent application, just as is in standard patents. For example, a certified copy of assignment will be required in case the person who files the patent isn’t the person named in the designated patent application. The applicant may also be required to submit other relevant documents to show legal right over the patent.

When Should the Application be Filed?

The general rule is that there’s no time limit for short-term patent applications filing in Hong Kong. But there are rules and regulations under specific circumstances, such as:

• Within 12 months of filing the first application. This rule applies to applicants who claim priority from a first application in another country or territory covered by the Paris Convention or a member territory of the World Trade Organization (WTO).

• Within six months of the disclosure. This rule applies to instances when the invention has been disclosed and the applicant claims that the disclosure doesn’t prejudice its novelty.

The patent applications can be filed in either Chinese or English; official forms are available in these languages. The subsequent correspondence will be made in the applicant’s preferred language.

But there are certain information that must be shown in both Chinese and English. These include the title of the invention and the abstract of the application, the form and substance of which have significant impact on the application’s approval.

Note: In case the applicant’s name isn’t in Chinese characters or Roman letters, a transliteration of the name in Roman letters will be required.

What Documents Should Be Filed?

Many of the documents required for short-term patent applications are different from those in standard patent applications. The documents for the latter include but aren’t limited to:

• Patents Form P6
• Abstract
• Title of the invention
• Applicants and/or inventor’s name and address
• Search report
• Specifications in the Patents Ordinance and Patents General Rules
• Patents Form P6A for entitlement purposes
• Statement of priority and priority documents in case of priority claim

Again, we cannot overemphasize the importance of appointing an patent agent to handle the patent application forms!

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent and Trademark Application & Related Services

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