According to a written reply by the Secretary for Commerce and Economic Development, Mrs. Rita Lau, to a question by the Hon Wong Ting-kwong at the Legislative Council meeting on December 9, 2009, Hong Kong government have no plan to establish an “original grant patent system” for the time being.
The Patents Ordinance (Cap. 514) of Hong Kong provides for the relevant requirements under the patent registration system in Hong Kong. For the purpose of granting a patent, the Hong Kong Patents Registry will verify the documents and information submitted to ensure that the registration requirements are met. It does not conduct substantive examination, i.e. it does not assess whether the invention is novel, involves an inventive step and is susceptible to industrial applications.
Standard patents obtained in Hong Kong are based on a patent granted by one of three ”designated patent offices”. These “designated patent offices”, which adopt the “original grant patent system”, are the State Intellectual Property Office, the United Kingdom Patent Office and the European Patent Office. The application process involves two stages. At Stage 1, the applicant files a “request to record” in Hong Kong within the prescribed period  after the patent application has been published by a “designated patent office”. At Stage 2, after the patent has been granted by the designated patent office, the applicant files a “request for registration and grant” within the prescribed period . The Hong Kong Patents Registry will normally grant the patent within a few months after receiving the relevant certifying document from the “designated patent office”. A standard patent may remain in force for a maximum term of 20 years.
As for a short-term patent, the applicant files his application direct with the Hong Kong Patents Registry without having to go through a “designated patent office”. The applicant will need to submit a search report prepared either by one of the “designated patent offices” or by any International Searching Authority appointed pursuant to Article 16 of the Patent Co-operation Treaty. The Hong Kong Patents Registry will grant the short-term patent after satisfying itself that the information required is fully furnished. Such a process normally takes a few months. A short-term patent may remain in force for a maximum term of eight years.
Before establishing an “original grant patent system”, a Patent Office would need to have a comprehensive technical information databank and a sizable pool of suitably qualified technical personnel. Such prerequisites are essential for the substantive examination of applications covering the main technical fields of inventions, including the capacity to assess whether an invention is patentable (i.e. whether the invention is novel, involves an inventive step and is susceptible to industrial application). The relevant set-up cost is enormous. Moreover, given the present relatively low volume of patent applications originating from Hong Kong (approximately 1% of the total number of applications received for standard patents), establishing an “original grant patent system” may not be cost-effective.
The patent systems of Singapore and Macao are not “original grant patent systems” either. Singapore has outsourced the substantive examination of patent applications to the Patent Offices of Australia, Austria, Denmark and Hungary while patent applications filed with the Macao Patent Office are entrusted to the State Intellectual Property Office for substantive examination. The relevant patents granted are valid only in the economy where the applications are made.
In Hong Kong, most applicants for patent registration will simultaneously seek patent protection in other economies (including our major trading partners, such as Europe or the Mainland). Not only does the existing patent registration system largely meet the business needs of the applicants, the process leading to registration is relatively straight-forward and inexpensive (entailing a fee of $896 for filing an application).
Note 1: The standard patent application has to be filed in Hong Kong within 6 months after the date of publication of corresponding application in a designated patent office.
Note 2: The request has to be filed in Hong Kong within 6 months after the date of grant of the designated patent by the designated patent office or publication of the request to record in Hong Kong, whichever is later.