NIA Intellectual Property Limited

NOVEL．INVENT．APPLY ^TM

Hong Kong Standard patent

Protection under Hong Kong standard patent last for 20 years.

In Hong Kong, there is no “substantive examination” for standard patent, and the grant of a standard patent is based on the registration of patent granted by one of three patent offices, called “designated patent offices” :

the State Intellectual Property Office, People's Republic of China
the European Patent Office, in respect of a patent designating the United Kingdom
the United Kingdom Patent Office.

A standard patent application in Hong Kong is made in two stages by filing

a request to record the designated patent application, that is the Chinese, EP(UK) or UK published patent application (stage 1).
a request for registration and grant in Hong Kong of the Chinese, EP(UK) or UK granted patent (stage 2).

Standard patent registration - stage1

You need to file a request to record (stage 1) in Hong Kong within 6 months after the publication of the corresponding designated patent application.

For international application (under the Patent Cooperation Treaty) designating China, and the application has been published by the International Bureau in Chinese, you need to file the request to record (stage 1) in Hong Kong within six months after the patent Office of China issues a national application notification.

For international application (under the Patent Cooperation Treaty), and the application has been published by the International Bureau in a language not in Chinese, you need to file the request to record (stage 1) in Hong Kong within six months after the date of publication in the designated patent office as serves to indicate that the international application has validly entered its national phase in the designated patent office.

The request to record will be published by Hong Kong Intellectual Property Department about 10 months after filing the request to record (stage 1).

Maintenance fee for stage 1

Unless request for registration and grant (stage 2) has been filed, you need to pay a maintenance fee each year starting from the sixth anniversary of the date of filing the corresponding designated patent application (or the PCT filing date if it is based on an international application) after the request to record is published.

For example, if your UK application was filed on March 10, and the request to record (stage 1) was published on November 1, 2016. Then, “the first anniversary of the date of filing the corresponding designated patent application after the request to record is published” should be March 10, 2017, and so “the sixth anniversary of the date of filing the corresponding designated patent application after the request to record is published“ should be March 10, 2022. If you have not yet filed the request for registration and grant(stage 2), you will need to pay a maintenance fee each year starting from this March 10, 2022.

According to our experience, however, most probably you do not need to pay this maintenance fee. The reason is that in most cases the designated patent would have already been granted, and you could move on to stage 2 before this maintenance fee is needed.

Standard patent registration - stage 2

You need to file a request for registration and grant (stage 2) in Hong Kong within six months after the later of : the publication of the request to record or the grant of the designated patent by the designated patent office.

When the stage 2 is completed, a patent certificate will be issued.

Renewal fee after grant

You need to pay a renewal fee each year starting from the fourth anniversary of the date of filing the corresponding designated patent application (or the PCT filing date if it is based on an international application) after the standard patent is granted.

For example, if your UK application was filed on March 10, and the Hong Kong standard patent was granted on December 18, 2019. Then, “the first anniversary of the date of filing the corresponding designated patent application after the standard patent is granted” should be March 10, 2020, and so “the fourth anniversary of the date of filing the corresponding designated patent application after the standard patent is granted “ should be March 10, 2023. You will need to pay the renewal fee each year starting from this March 10, 2023.

Hong Kong Standard Patent Fee Schedule

(Fee includes official fee, agent fee, and postages. The applicant will need to provide English and Chinese version of Title and Abstract)

Stage 1 (request to record) HK$2998/RMB¥2651/USD385/EUR343

Translation of Title and Abstract from English to Chinese/Chinese to English (stage 1): HKD$800

Maintenance fee for stage 1 (if needed), is HKD$1199 per year.

Stage 2(request for registration and grant) HK$2998/RMB¥2651/USD385/EUR343

Renewal fee is HKD$1199 per year.

Hong Kong Short-term patent

Hong Kong short-term patent lasts for 8 years. Renewal fee is needed only on the 4^th year.

To support an application for a short-term patent you need to file a search report from one of the following searching authorities

an international searching authority under Article 16, Patent Co-operation Treaty;
the State Intellectual Property Office, People's Republic of China;
the European Patent Office;
the United Kingdom Patent Office.

Fee

(Fee includes official fee, agent fee, and postages, but does not include writing of specifications and translation)

Filing fee : HKD$3800

Search report by the State Intellectual Property Office, People's Republic of China: Chinese : HKD$4800 English : HKD$7000

Writing patent specifications: Cost Negotiable

Renewal fee at the 4^th year HKD$1980

Patent Cooperation Treaty

Please refer to World Intellectual Property Organization .

PCT filing fee

HKD$25800

Writing patent specifications: Cost Negotiable

Hong Kong Trademark

The Hong Kong Trademark Registry, which is one of the oldest trademark registries in the world, was established in 1874.

Trademark Fee Schedule

Registration fee HKD$2900. Extra class HKD$1600

Contact us

Telephone / Whatsapp / WeChat: +852 6390 3036

Email :

Address：

NIA Intellectual Property Limited,

Unit 501, 5/F, Belgian Bank Building,

721-725 Nathan Road,

Mong Kok, Kowloon,

Hong Kong.