Ella Cheong News

Patent News release

•Reform of Hong Kong Patent System – Update
•Proposed Amendments on Patent Examination Guidelines
•New Progress of Patent Prosecution Highway With SIPO

Reform of Hong Kong Patent System – Update 
Enterprises and research institutions have always been complaining that the patent system of Hong Kong is unfriendly to local patent filings and curbs the growth of local inventions because there is no original grant patent in Hong Kong.  Soon, a change will address this issue.
Under the current patent system in Hong Kong, patent application allows an applicant to secure either a standard patent or a short-term patent.  After more than a year from the end of public consultation, the Advisory Committee recommended in its report released in February 2013 to add a third kind of patents which include substantive examination by foreign patent offices, known as original grant patents, and will work out an implementation plan in the next phase.
The key difference among the three kinds of patents to be offered is: 
1. Short-term patent does not require any substantive examination;
2. Standard patent is merely a re-registration system to register a UK, CN, or EP designating UK patent in Hong Kong;
3. Original grant patents will fill the gap if an applicant wishes to directly secure a Hong Kong patent which is proven to be valid through substantive examination.
The Advisory Committee also recommended a full-fledged regulatory regime on patent agency services in Hong Kong, to be achieved in stages and with transitional measures, to support the development of the new patent system in Hong Kong. 
On one hand, the ongoing patent system reform aims at accommodating the development needs and the vision for innovation of Hong Kong, as well as bringing the Hong Kong patent system on par with those in other economies.  On the other hand, the existing system such as short-term patents and standard patents will be preserved, therefore the impact to users to the current system will be minimal.
Proposed Amendments on Patent Examination Guidelines 
China State Intellectual Property Office (“SIPO”) recently issued a proposal for amendments on the Patent Examination Guidelines and seeks public opinion. 
The proposed amendments mainly concern the examination of patent applications for utility models and designs, and the purpose of such amendments is to improve the quality of granted patents.  Under the current practice, the examiner does not conduct any search in the preliminary examination.  In this way, a patent may be granted even if the invention or design is not new, or the same invention/design may be repeatedly granted, thus seriously affecting the quality of granted patents. 
In the proposed amendments, wordings like “generally does not conduct any search” or “not through search” have been deleted and the examiner is encouraged to conduct searches so as to determine whether the patent application for utility model or design obviously lacks novelty. 
Although SIPO emphasizes or strengthens the search function, such search concentrates on identical invention or existing design (i.e. novelty issue instead of inventiveness issue), which does not change the principle of preliminary examination on patent applications for utility model or design. If the proposed amendments are approved, certainly there will be more office actions regarding the novelty issue for these two types of patent applications.
New Progress of Patent Prosecution Highway With SIPO 
On 1 March 2013, the Austrian Patent Office and the Mexican Institute of Industrial Property officially became new collaborators with the China State Intellectual Property Office (“SIPO”) in the Patent Prosecution Highway Pilot Program (“PPH”).  The PPH with said two patent offices will last for 1 year and end on 28 February 2014. 
So far, a total of 9 collaborators have entered into agreements with the SIPO for PPH, including Japan Patent Office (“JPO”), United States Patent and Trademark Office (“USPTO”), Korean Intellectual Property Office (“KIPO”), German Patent and Trade Mark Office, Federal Service for Intellectual Property of the Russian Federation, National Board of Patents and Registration of Finland, Denmark Patent and Trademark Office, and the two mentioned above. This indicates that more and more applications would benefit from the PPH. 
According to our experience, in the case of using the PPH, the first office action can be issued within three months after the PPH request is approved by SIPO. Compared with the regular cases where first office actions are on average issued around 1 to 2 years after the substantive examination procedure commences, adopting PPH can definitely speed up the examination process. However, as the SIPO still carries out examination independently, the grant of patents by other collaborating patent offices cannot absolutely guarantee a grant of any patent in China.
COMPANY NEWS
2013 Global Law Experts Practice Awards by GlobalLawExperts
Hong Kong – Boutique IP Law Firm of the Year
 
Global Awards 2013 by Corporate LiveWire
China – Intellectual Property Law Firm of the Year 
China – Trademark Law Firm of the Year
China – Patents Law Firm of the Year