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Author: Christopher Britton
Service Area: Intellectual Property
Date: March 2011
Country: Hong Kong

 

Hong Kong Patent Filing and Chinese (PRC) Patent Prosecution

 

Deacons' Patent & Design group's practice includes filing, prosecuting and advising upon patent law and practice, in relation to Hong Kong patents and Design, and Chinese patents and Designs.

All aspects of patent filing and prosecution, and professional advice is conducted and overseen by the Firm's qualified and Registered Patent Attorneys. The Firm's Patent Attorneys may be contacted to discuss any aspects of Hong Kong or Chinese patents and designs.

1. Hong Kong Patents and Registered Designs

1.1 Standard Patents (20 year term)

A Hong Kong Standard Patent is based upon a Designated Patent, this being a European, UK or Chinese patent. In order to pursue Hong Kong patent rights, it is necessary to:

(i) file a Request to Record the Designated Patent in Hong Kong within 6 months of its date of publication; then

(ii) file a Request for Registration and Grant of the Designated Patent in Hong Kong within 6 months of its date of grant.

Please note, a Hong Kong Standard Patent cannot be filed as a PCT National Phase application, and must be timely filed within the above non-extendable time limits.

1.2 Hong Kong Short-term Patent (8 year)

A Hong Kong Short-term patent may be filed as a "first filing" or as a "Convention Application" under the Paris Convention prior to expiration of the 12 month Convention filing deadline.

No substantive examination is conducted, however an "International Type Search" conducted by an accepted International Examining Authority must be furnished in order for the Short-term patent to then proceed to grant. Please note, no grace periods exist, and absolute Novelty provisions apply.

1.3 Hong Kong Registered Designs

Under Hong Kong Design law, protection for Industrial Designs may be sought by way of Design Registration.

Protection may be obtained in relation to aspects of shape, configuration, pattern or ornamentation as applied to an article. The maximum term of monopoly for a Registered Design in Hong Kong is 25 years.

Applications may be made under the Paris Convention, within 6 months of the earliest priority date.

Please note, no grace periods exist, and absolute Novelty provisions apply.

2. Chinese Patents and Registered Designs

2.1 Chinese Patents

Chinese patent law was first introduced in Mainland China (PRC) effective as of 1985. The rapid increase in the importance of obtaining intellectual property protection in the Chinese market is reflected in the rising number of patent and design applications by local and foreign entities.

China is a PCT signatory, and applications may be effected within 30 months of the earliest priority date, however a 2 month "as of right" extension until 32 months. However it must be noted that a translation of the text of the specification into Chinese MUST be filed prior to expiration of the 32 month deadline.

Chinese applications may also be effected under the Paris Convention within 12 months of the earliest priority date. It should be noted, a translation of the text of the specification into Chinese MUST be filed BEFORE expiration of the 12 month deadline.

Both "invention patents" and "Utility Model" patents are available under Chinese patent law, and absolute novelty provisions apply without any grace period provisions for self disclosure.

2.2 Chinese Designs

China also provides protection for rights pertaining to Industrial Designs.

Applications may be effected within 6 months of the earliest priority date under the Paris Convention.

Protection is provided for a maximum term of 10 years.

Please note, no grace periods exist, and absolute Novelty provisions apply.

2.3 Chinese Patent Prosecution Issues

Translation in relation to accuracy of technical terms during translation is a fundamental issue in Chinese patent practice. Inaccurately or inappropriately translated technical terms, in particular terms commonly used in the art, often cause difficulties during prosecution.

Furthermore, translation inaccuracies which may be limiting or even invalidating, may go undetected even up until grant. As such, it is pertinent that at least the claims of a Chinese patent specification are prepared and/or reviewed by a practitioner whose technical education and professional experience is in the language of the originating specification.

The Patents and Designs Group's bilingual practitioners, whilst fluent in both English and Chinese (Mandarin and Cantonese), importantly have technical tertiary education in the English language. As such, correct knowledge and interpretation of technical terms and terms of art are utilised in translated patent claims by Deacons, so as to correctly define the required claim scope.

The technical expertise of the Firm's patent practitioners, experience in the intricacies of Chinese prosecution and familiarity with the prosecution and drafting requirements allows our technically qualified and bi-lingual Patent Professionals to provide unrivalled expertise in pursuing commercially relevant and appropriate intellectual property protection in Mainland China.

Deacons Patent Attorney's prosecution practice is further enhanced by our experience in the provision of strategic advice for licensing, enforcement strategies and litigation of patent and design matters in Mainland China, in conjunction with lawyers from our China and Hong Kong licensing and enforcement practices.

The Firm also has an extensive practice in dealing with technology transfers into the PRC. The technology transfer provisions in China are both legally and administratively difficult to interpret without extensive experience. With offices in China and in Hong Kong, we can provide expertise to ensure legal compliance, and expeditious passage of approvals for technology transfer.