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 Why File a Patent in Hong Kong?

          Although sovereignty was transferred to the Peoples Republic of China (PRC) in 1997, Hong Kong still maintains its own intellectual property governance. However, many companies express confusion over separate Hong Kong patent filings, wondering whether such protection is even necessary, whether it is worth the cost, and whether it is feasible to effectively enforce patents in Hong Kong.
          When considering whether to file in Hong Kong, it is helpful to understand the basics of the Hong Kong patent system as well as financial, legal, and administrative considerations that may affect such filing decisions.

                                                                                 Hong Kong Patent System
          Hong Kong has “standard” and “short-term” utility patents. An applicant can obtain a standard patent (with a term of up to 20 years) based upon a filing in the State Intellectual Property Office of the PRC, the European Patent Office, or the United Kingdom Intellectual Property Office. In each case, an applicant must request recordation of the application in Hong Kong within six months after the publication date of the application by the designated patent office. The application is not substantively examined in Hong Kong. Instead, the applicant simply files a request for registration in Hong Kong within six months after the patent grant in the designated patent office. The Hong Kong standard patent is therefore identical to the patent granted by the designated patent office.
          The short-term patent (with a term of up to eight years) is similar to the standard patent in that there is no substantive examination of the application. One applies for a short-term patent by submitting a search report from an international search authority or one of the designated patent offices. If the applicant complies with the proper formalities, the short-term patent is granted within three months.
          Besides utility patents, a design registration can be obtained by a process similar to that for industrial designs and design patents in other countries. An applicant files a request for a design registration directly in Hong Kong, either as a first filing or while claiming priority to a previously filed foreign application. The term of the design registration can last up to 25 years, so long as the proper renewal fees are paid every five years.
                                                     

                                                         The Limitations of the Hong Kong Patent System
          Although it is relatively easy to obtain a Hong Kong patent, enforcing the patent is not so simple. First, Hong Kong patent rights do not extend into the PRC. One therefore cannot, for example, file an infringement action against a manufacturer in Shenzhen (just 20 miles from Hong Kong) unless the infringing product is brought into Hong Kong. Unless one has patent rights in China, Chinese exporters can avoid a Hong Kong enforcement action simply by having their products shipped through Shenzhen, Guangzhou, or another major Chinese port.
          Even if infringing products have a physical presence in Hong Kong, there are still other obstacles to enforcing the infringed Hong Kong patent. Traditionally, Hong Kong patent litigation has been rare, and Hong Kong does not have a large number of qualified and experienced patent litigators. Furthermore, Hong Kong patent litigation is relatively expensive compared to surrounding jurisdictions, with costs often reaching USD300,000 or more.

                                                                                       Potential Benefits
          Notwithstanding the drawbacks, a Hong Kong patent can play an important role in a company’s worldwide patent portfolio. Although there are other large ports in China, the Port of Hong Kong is still one of the largest in the world, processing more than 24 million container loads of goods in 2008. Additionally, with more than seven million people and being among the highest in Asia for per capita income, Hong Kong is a potentially lucrative consumer market. As a result, companies may still find it worthwhile to obtain Hong Kong patent protection — both to put up one more obstacle for Chinese exporters and to protect a potentially important consumer market.    >> go to next page