Patent or design protection in mainland China does not provide protection in Hong Kong or Macau. Patents and designs must be filed directly and registered in each territory.
More information on patents is available from the Hong Kong Intellectual Property Department at https://www.ipd.gov.hk/eng/applicants/patents.htm
A Hong Kong patent right can sometimes be a useful addition to an IP portfolio. Many businesses have registered companies in Hong Kong that hold financial assets, which can make it a useful forum for patent litigation.
Hong Kong operates a re-registration patent system. Applications can be filed in English or Chinese. Applicants should be aware of several important deadlines, set out below.
The grant of a standard patent is based on the prior grant of a corresponding patent by any one of three designated patent offices:
- the China National Intellectual Property Administration (CNIPA);
- the United Kingdom Intellectual Property Office (UKIPO);
- the European Patent Office (EPO), with respect to a granted patent designating the United Kingdom.
A Hong Kong standard patent has a two-stage application process.
In the first stage, the applicant files a request to designate a pending patent application filed with CNIPA, the UKIPO or the EPO. This can be a PCT national phase application. The request must be filed within six months of the publication of the designated patent application.
In the second stage, after the designated patent application has been granted, the applicant can request registration and grant in Hong Kong. The request must be filed within six months of the grant of the designated patent application.
The term of the Hong Kong standard patent is 20 years from the filing date of the designated application.
Hong Kong also provides a short-term patent, which provides protection for a maximum of 8 years. The novelty and inventive step requirements are the same as standard patents. Applications are made directly to the Hong Kong Intellectual Property Department. A short-term patent requires a search report prepared by a PCT International Search Authority, such as Australia or CNIPA. A short-term patent application may include only one independent claim.
Hong Kong protects designs for a maximum of 25 years from the filing date.
A design application for Hong Kong can claim a priority date based on an Australian application if you file the Hong Kong application within six months of the filing date of the first application.
A grace period provides that exhibiting a design at an official international exhibition will not destroy its novelty if the Hong Kong application is filed within six months of the opening of the exhibition. It is preferable not to rely on grace periods as your disclosure may risk falling outside these limited circumstances.
Macau has both invention patents, with a maximum term of 20 years, and utility model patents, with a maximum of 10 years.
There are two ways to obtain a patent in Macau – through a direct patent application, or by re-registration of a patent granted by CNIPA or the EPO. A request for re-registration must be made within 3 months of grant.
In order to claim an earlier priority date, direct applications must be filed in Macau within 12 months of the filing date of the corresponding application.
Macau protects designs for a maximum of 25 years from the filing date.
A design application for Macau can claim a priority date based on an Australian application if you file the Macau application within six months of the first application.
IP Australia’s Engaging an attorney toolkit sets out everything you need to know about engaging an attorney for your patent application.