Please “Mind the Traps”: Four Common Misconceptions About Hong Kong Patents
For many foreign companies interested in the broader Asian market, Hong Kong is a strategically important jurisdiction. However, because of its unique legal framework, domestic and foreign companies alike are confused by how IP protection works in Hong Kong. Missteps in such understanding can lead to critical, costly "gaps" in IP protection.
To safeguard innovations effectively in Hong Kong, be aware of these four common misconceptions:
- Trap 1: "Our Mainland China patent automatically covers Hong Kong."
- The Reality: Under the "One Country, Two Systems" principle, Hong Kong operates as an entirely independent jurisdiction. A patent granted in China (by the China National Intellectual Property Administration (CNIPA)) has no legal effect in Hong Kong.
- The Strategy: Proactively file a separate application with the Hong Kong Intellectual Property Department (HKIPD). Treat Hong Kong as a separate jurisdiction in your global IP portfolio to ensure comprehensive regional protection. You can file directly with the HKIPD or request to record and register a Chinese, UK, or European (designating the UK) patent in Hong Kong without having to do a separate substantive examination in Hong Kong.
- Trap 2: "We can use our PCT application for direct entry into Hong Kong."
- The Reality: Patent Cooperation Treaty (PCT) applications cannot enter Hong Kong directly via the national phase entry.
- The Strategy: First, enter the national or regional phase in China, the UK, or Europe (designating the UK). Then, you can subsequently extend that national or regional phase application into Hong Kong.
- Trap 3: "We can file only one Re-registration patent application for every invention in Hong Kong."
- The Reality: You can file (“record”) more than one standard Hong Kong (R) patent application for the same invention designating multiple jurisdictions (e.g., China and Europe) respectively, and register them all to proceed to grant, provided no two claims have substantively identical claim scopes (double patenting).
- The Strategy: Obtaining a Standard (R) patent in Hong Kong involves a two steps process: Step 1: Request to record (at publication of CN/EP/UK patent application) and Step 2: Request for registration (at grant of CN/EP/UK patent). You can request to record multiple Step 1 requests and file the Step 2 request for the application that is granted with a more favourable claim scope. Alternatively, you may be able to register multiple Step 1 applications, provided no two granted claims have substantively identical claim scopes (double patenting).
- Trap 4: “Our only option for getting a patent in Hong Kong is the standard 20-year patent”
- The Reality: Hong Kong short-term patents are excellent alternatives for fast-moving commercial technologies. They grant quickly because they are not substantively examined, and are valid for up to eight years.
- The Strategy: For products with a short market life or fast turnover, the Hong Kong short-term patent can be a great choice. A maximum of two independent claims can be included in one application. Please note: although a Hong Kong short-term is not examined, a substantive search report (even if negative) will be issued and published alongside the granted patent.
Hong Kong IP protection goes well beyond a simple registration of a Chinese or European/UK patent. There are many strategies and multi-layered approaches for protecting IP in this key jurisdiction.
If you would like to have more information on this matter or would like to have our advice, please feel free to contact us at [email protected].
This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.
