Hong Kong Patent Practitioners Divided Over Original Grant Patent in Hong Kong

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After Dr. Marcelo Thompson (photo), Deputy Director, HKU Law & Technology Center chaired the panel discussing the Worldwide Patent Law Reform. Mr Timothy Hancock, President of Asian Patent Attorneys Association Hong Kong Group looked back the last three decades, when IP in Hong Kong was not the omnipresent field of law as it is nowadays, when Anton Pillar cases were frequent and when UK design rights automatically applied in Hong Kong. Mr Hancock explained that the use of the professional titles patent agent and attorney were controversial and would probably be regulated.

Mr Hancock’s Asian Patent Attorneys Association Hong Kong Group, the Law Society of Hong Kong;

and the Hong Kong Institute of Trade Mark Practitioners do not see a business case for having an OGP system. In contrast, the Hong Kong Institute of Patent Attorneys and the Hong Kong Institute of Patent Practitioners think it is beneficial for HK.

See the opinions of these organisations in the Report of the Advisory Committee on Review of the Patent System in Hong Kong, http://www.ipd.gov.hk/eng/intellectual_property/patents/review_report.pdf.

Dr. Jasemine Chambers (photo: right), Of Counsel, Wilson Sonsini Goodrich & Rosati, P.C., gave an overview of the implementation of the American Invent Act (AIA) which became effective in September 16, 2011 (PL 112-29). Dr. Chambers made clear that the AIA was the most significant patent reform in the U.S. since 1836, or at least the Patent Act of 1952. The AIA transitioned the U.S. from a first-to-invent to a first-to-file country (effective in March 16, 2013), it defines prior art (more broad) and grace period (more narrow). The goal of the AIA is to encourage innovation and create jobs. Dr. Chambers described the difficult creation of the AIA, which took 10 years. See more here: http://www.aipla.org/advocacy/congress/aia/Pages/summary.aspx.

See more of the Worldwide Patent Law Reform and Hong Kong’s Response HKU Workshop here: http://www.ipdragon.org/2015/01/17/worldwide-patent-law-reform-and-hong-kongs-response-hku-worksop/


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Hong Kong will probably get independent patent, China’s SIPO will teach HK how to examine

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After some welcome words of Professor Michael Hor (photo middle), the relatively new Dean of the Faculty of Law of HKU, Professor Paul Cheung (photo: right), Associate Vice President, Director of HKU Tech Transfer Office, talked briefly about the relationship of patents and innovation in China. He argued that the growth in the Chinese patents was indicative of the growth in innovation. (I would like to add to Professor Cheung’s words that the lion’s share of the patents or utility model patents and not invention patents, and that the quality of the patents might be very low since provincial and municipal governments provide subsidies for patents. A better yardstick might be the registration of patents by Chinese persons and companies abroad).

Then Ms Ada Leung (photo), the new Director of Hong Kong Intellectual Property Department (IPD) spoke about the 2011 public consultation on plans for the introduction of an Original Grant Patent (OGP) system in Hong Kong. At the moment the IPD can only re-register patents that were examined and granted by the Office for the Harmonisation of the Internal Market (OHIM), United Kingdom’s Intellectual Property Office (IPO) or China’s State Intellectual Property Office (SIPO). Via the public consultation the IPD is listening to the arguments of scholars, practitioners, interested parties and the public to find out the following: – whether Hong Kong IPD should be able to register OGPs, next to re-registering patents that have been granted by OHIM, IPO or SIPO; – and in case the answer is yes, whether Hong Kong should be able to do the examination themselves, which means acquire the knowledge and experience, or outsource it to a place that has the knowledge and experience. Ms Leung announced that in the first half of 2015 a new bill will be announced, which takes into account the comments of the public consultation. It seems that Hong Kong will choose for an OGP system next to the possibility of re-registration and is willing to build up the expertise in examination from scratch. Ms Leung told that the plan is that SIPO will help IPD with building up the expertise. This is a surprising choice given SIPO’s backlog and the alternatives of places that can help Hong Kong up to speed to set high standards of examination so that quality patents will be granted. See more of the Worldwide Patent Law Reform and Hong Kong’s Response Workshop here: http://www.ipdragon.org/2015/01/17/worldwide-patent-law-reform-and-hong-kongs-response-hku-workshop/.


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Worldwide Patent Law Reform and Hong Kong’s Response HKU Workshop

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University of Hong Kong Law & Technology Centre and the Intellectual Property Department of Hong Kong organized the IP Forum 2015 on 16 January 2015 at HKU.  The topic was “Patent and Innovation: Worldwide Patent Law Reform and Hong Kong’s Response”. The question that would be raised was, and hopefully answered was: “Can patent promote innovation?” Just as the poster announcing the event promised the forum/workshop brought “international and local patent law scholars and practitioners to explore the patent law reform around the world and Hong Kong’s proposed change to introduce an “original grant patent” system, and to discuss how these changes may be conducive to innovation.”

– Hong Kong will probably get independent patent, China’s SIPO will teach HK how to examine

– Professor Randall Rader Preaches the Blessings of Patents for Innovation at Hong Kong University

– Hong Kong Patent Practitioners Divided Over Original Grant Patent in Hong Kong

– Professor Bryan Mercurio on Patent Law: “One Size Does Not Necessarily Fit All”

– Prof Yahong Li Provides Overview of How China Put Innovation on Agenda, But “Patent Quantity Does Not Automatically Translate Into Quality Patents”

– “In Regard to Patent Systems Hong Kong is in the Same League as Fiji and the Seychelles”

 


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