In our August 1996 Newsletter (N.S. 187), we advised that the new Intellectual Property (World Trade Organization Amendments) Ordinance entered into force on May 10, 1996. Our sources have clarified that provisions relative to Trademarks under the new Ordinance entered into force on December 20, 1996 and, therefore, all the amendments relating to trademarks reported in our Information Letter entered into effect on that date, and not on May 10, 1996, as previously reported.

In our August 1996 Newsletter (N.S. 187) we also outlined the proposed new patent system that would be in effect after Hong Kong's return to Chinese sovereignty on July 1, 1997. The necessary legislation was passed by the Legislative Council on May 28, 1997, and came into effect on June 28. Its provisions are largely as outlined in our previous report. Under the new legislation two types of patent are available: standard patents and short term patents having a maximum term of eight years.

For standard patents a quasi-registration system continues to apply. It was felt that attempting to establish a full examination system in Hong Kong would not be justified. Hong Kong standard patents may be based on granted patents issued in certain designated jurisdictions. Initially, patents which can be used for this purpose are British patents, European patents (designating the United Kingdom) and Chinese patents. The procedure under the new law, however, differs substantially from the old provisions. Under the new law, a two-stage application procedure applies. To secure protection in Hong Kong it is necessary to file an application in Hong Kong within six months of the publication of the British, European or Chinese application on which the Hong Kong registration is to be based. The application does not, however, proceed to grant in Hong Kong until the patent on which the Hong Kong application is based has been granted. There is a right of interim protection in the form of compensation for unauthorized use during the period after the Hong Kong application has been published, and before the grant of the patent. The proof of grant of the basic patent has to be submitted within six months of its grant to be effective. The term of a standard patent is a maximum term of 20 years from filing of the British, Chinese or European patent on which it is based, subject to the payment of renewal fees. Renewal fees will also have to be paid on any patents registered under the former law or which were applied for in Hong Kong but not yet registered by June 28, 1997, all of which are deemed to be standard patents under the new law.

It is possible to obtain protection in Hong Kong, either as a standard patent or a short term patent through the Patent Cooperation Treaty by designating China.

Transitional provisions provide a means of protection for those who are entitled to register a patent in Hong Kong under the previous law. For patents already granted in the United Kingdom and granted European Patents that are effective in the United Kingdom, an application for a standard patent can still be made up to the earlier of June 26, 1998 or 5 years from the date of grant of the relevant British or European patent. For situations where British or European applications designating the United Kingdom were pending but not yet granted on June 27, 1997, the basic rule is that an application for a standard patent must be filed by December 26, 1998 and will then be treated as an application for a standard patent under the new law. However, if the basic patent is granted by June 26, 1998, it will be possible to request grant of a Hong Kong patent within 6 months of the grant of the patent on which it is based.

Short term patents will give rise to protection in Hong Kong for a maximum duration of eight years from filing. They are subject only to a formalities examination. Applications for such patents will, however, not be published or granted until the applicant files a search report from a designated searching authority. Additionally in litigation, the owner of a short term patent is to bear the onus of proving that the patent is valid. As further protection against unjustified use of a short term patent, any defendant subject to a preliminary injunction under a short term patent is to be entitled to an early trial. Finally, the making of groundless threats of infringement of such a patent is to be subject to civil proceedings.

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