The patent system in Hong Kong, Macao and Taiwan is different from that in mainland China. Patent applications that are authorized in mainland my country will not be automatically authorized in Hong Kong, Macao and Taiwan. If you only apply for a patent at the National Intellectual Property Administration in mainland China, you will not be able to automatically protect your rights in Hong Kong, Macao and Taiwan. From the perspective of a patent agent, the author briefly explains the patent application and examination system in Hong Kong, Macao and Taiwan to help patent agents understand the relevant application and examination system and facilitate patent agents to provide patent services to applicants who want to apply for patents in Hong Kong, Macao and Taiwan.

PART.01

 Application type and protection period

1. Patent application type and protection period in Hong Kong

Patents in Hong Kong are divided into standard patents, short-term patents and design patents.

(1) Standard patents include transcription standard patents and original grant standard patents.

A standard patent (R) is a patent registered and granted in the Hong Kong Special Administrative Region after examination and authorization by a designated patent office based on the re-registration system. The designated patent offices include the Chinese Patent Office, the UK Patent Office and the European Patent Office.

An original grant standard patent is a patent submitted in the Hong Kong Special Administrative Region and substantively examined and authorized by the Intellectual Property Department of the Hong Kong Special Administrative Region based on the original grant patent system, which was officially implemented on December 19, 2019.

The protection period of both a standard patent (R) and an original grant standard patent is 20 years. The protection period of a standard patent (R) starts from the date of application of the designated patent at the designated office, while the protection period of an original grant standard patent starts from the date of application at the Intellectual Property Department of the Hong Kong Special Administrative Region.

(2) A short-term patent refers to an invention patent that is submitted directly by an applicant to the Intellectual Property Department of the Hong Kong Special Administrative Region and is registered after formal examination. A short-term patent can be renewed after 4 years from the date of submission of the application, with a maximum validity period of 8 years (calculated from the application date or priority date).

(3) The initial validity period of a design patent is 5 years from the date of filing the registration application, and it can be renewed for 5 years each time thereafter, with a total validity period of no more than 25 years.

In addition, unlike mainland China, the patent in the Hong Kong Special Administrative Region does not distinguish between inventions and utility models. Its definition of patent is: if an invention is novel, contains creativity and can be industrially applied, and does not belong to any excluded category, it is a patentable invention in the Hong Kong Special Administrative Region. Therefore, in terms of protection content, standard patents for transcription, original grant standard patents and short-term patents are similar to invention patents in mainland China. In terms of protection period, standard patents for transcription and original grant standard patents are similar to invention patents in mainland China, and short-term patents are similar to utility model patents in mainland China.

2. Patent application types and protection periods in the Macao Special Administrative Region

The types of patents in the Macao Special Administrative Region are divided into invention patents, utility patents and design and utility model patents, and their protection periods are 20 years, 10 years and 25 years respectively, all starting from the date of application.

The protection period of invention patents or patent applications granted by the State Intellectual Property Office of mainland China and extended to the Macao Special Administrative Region is starting from the date of application by the State Intellectual Property Office.

Among them, invention patents refer to new technical solutions proposed for products, methods or their improvements.

Utility patents (also known as utility model patents) are new technical solutions suitable for practical use for the shape, structure or combination of products.

Design and new patents refer to new designs that are aesthetically pleasing and suitable for industrial applications, such as the shape, pattern or combination of the two, and the combination of color, shape and pattern.

Invention and utility patents focus on improvements in product functions, technology, manufacturing and ease of use; while the technical level of utility patents is lower than that of invention patents.

3. Types of patent applications and protection periods in Taiwan

Patents in Taiwan are divided into invention patents, new patents and design patents, and their protection periods are 20 years, 10 years and 12 years respectively, all starting from the date of application.

Among them, invention patents and new patents are both to protect the creation of technical ideas that utilize natural laws, focusing on improvements in functions, technology, manufacturing and ease of use. However, the objects of protection for inventions are relatively broad, including substances (without a certain spatial form), articles (with a certain spatial form), methods, biological materials and their uses; the objects of protection for new types are only the creation of the shape, structure or combination of articles. Design patents protect the shape, pattern, color or combination of all or part of an article.

PART.02

Application channels and examination methods

1. Application channels and examination methods for patents in the Hong Kong Special Administrative Region

(1) There are two steps to obtain a standard patent for transcription in the Hong Kong Special Administrative Region:

First, the applicant should apply for his invention to the designated patent office, and apply for record in the registry of the Intellectual Property Department of the Hong Kong Special Administrative Region within 6 months after the application is published by the designated patent office. The registry will record and publish it after formal examination.

Second, the application should be applied for registration and authorization to the Intellectual Property Department within 6 months after the patent right is granted or the record application is published. The registry will approve the registration and grant the Hong Kong Special Administrative Region standard patent and publish it after formal examination.

Applications for standard patents (R) are only subject to formal examination by the Director of Patents to determine whether the required information and documents supporting the application have been submitted in accordance with statutory requirements.

(2) Standard patents (OGP) are patents submitted directly by applicants to the Intellectual Property Department of the Hong Kong Special Administrative Region and are subject to formal and substantive examination by the Director of Patents. Substantive examination requires the Director of Patents to determine whether the invention for which protection is sought meets the requirements for patentability, such as whether the invention is novel, involves inventive step and is capable of industrial application.

(3) Applications for short-term patents are directly accepted by the Registry of the Intellectual Property Department of the Hong Kong Special Administrative Region. Short-term patents are not subject to search and substantive examination, only formal examination is conducted, and patent rights are granted if the examination is qualified.

When submitting a short-term patent application, the applicant should also submit a search report on the patent conducted by the prescribed search agency, which includes Austria, Australia, China, Japan, the Russian Federation, Spain, Sweden, the United States, the United Kingdom and the European Patent Office.

(4) Design patents are not subject to substantive examination, only formal examination is conducted, and patent rights are granted if the examination is qualified.

In summary, the Hong Kong Special Administrative Region only conducts formal examinations for standard patents, short-term patents and design patents, but does not conduct substantive examinations, while the original granted standard patents require both formal and substantive examinations. In terms of the examination method, the original granted standard patent is similar to the invention patent in mainland China, and the short-term patent is similar to the utility model patent in mainland China.

2. Application and examination methods for patents in the Macao Special Administrative Region

(1) There are two ways to apply for invention patents in the Macao Special Administrative Region:

a. Submit a new application directly to the Economic Bureau of the Macao Special Administrative Region within 12 months of the date of the prior application, either directly or in accordance with the Paris Convention;

b. Apply for invention patents in the Macao Special Administrative Region based on invention patents or patent applications granted by the State Intellectual Property Office of mainland China.

(2) To apply for utility patents in the Macao Special Administrative Region, applicants can only submit applications directly to the Economic Bureau of the Macao Special Administrative Region within 12 months of the date of the prior application, either directly or in accordance with the Paris Convention.

Macao SAR utility patents refer to patents granted for the shape, structure or combination of an article, which increases the practicality of the article or improves the use of the article. The subject matter of protection is similar to that of utility model patents in China.

However, in terms of examination methods, Macao SAR utility patents need to undergo a substantive examination procedure before they can be granted. According to the "Agreement on Cooperation in the Field of Intellectual Property between the National Intellectual Property Administration and the Economic Bureau of the Macao Special Administrative Region", the substantive examination of Macao SAR utility patents is completed by the National Intellectual Property Administration of mainland China, and the specific approval procedures are completed by the Economic Bureau of the Macao Special Administrative Region.

(3) To apply for Macao SAR design and model patents, applicants can only apply directly to the Economic Bureau of the Macao Special Administrative Region within 6 months of the date of the prior application or in accordance with the Paris Convention.

For Macao SAR design and model patent applications, applicants need to submit an examination request to the Economic Bureau of the Macao Special Administrative Region, and the application can only be granted after passing the examination. Similarly, according to the "Agreement on Cooperation in the Field of Intellectual Property between the National Intellectual Property Administration and the Economic Bureau of the Macao Special Administrative Region", the review work is completed by the National Intellectual Property Administration of mainland China, and the specific approval procedures are completed by the Economic Bureau of the Macao Special Administrative Region.

3. Application channels and review methods for patents in Taiwan

If you want to obtain patent protection in Taiwan, there are two application channels:

(1) Direct application:

Submit a patent application directly to the relevant department in Taiwan (the so-called "Ministry of Economic Affairs Intellectual Property Office (TIPO)").

(2) Paris Convention:

Taiwan is not a signatory to the PCT Patent Cooperation Treaty and the Paris Convention, but WTO members recognize the priority of the Paris Convention in accordance with the TRIPS Agreement (full name: "Agreement on Trade-Related Aspects of Intellectual Property Rights"). In addition, according to the "Cross-Strait Intellectual Property Protection Cooperation Agreement" signed by mainland China and Taiwan on June 29, 2010, the two sides mutually recognize patent priority. Therefore, patent applications entering Taiwan (if there is a priority) can be submitted through the Paris Convention within 12 months (for invention and new model applications) or 6 months (for design applications) from the earliest priority date.

In addition to formal examination, both invention patents and design patents must undergo substantive examination (also known as entity examination) before obtaining patent rights. Utility patents adopt a formal examination system, and will not undergo substantive examination of their novelty and progressiveness. As long as they meet the formal requirements, they can be issued a certificate.

PART.03

Substantive Examination System

1. Substantive Examination System for Patents in the Hong Kong Special Administrative Region

Currently, among the patents in the Hong Kong Special Administrative Region, only the original granted standard patents need to undergo substantive examination. The content of the substantive examination mainly introduces the following two points:

(1) Novelty

When examining the novelty of the original granted standard patent, the patent examiner will not only consider whether the prior art has been disclosed first, but also whether the content disclosed in the prior art is "realizable". "Realizable" means that the content disclosed in the prior art must be sufficient to enable a person skilled in the art to implement the invention. It can be seen that in terms of whether the prior art can destroy the novelty of an invention, the examination practice in the Hong Kong Special Administrative Region has put forward relatively high requirements.

(2) Inventive step

In examining the inventive step of a standard patent (OGP), the patent examiner adopts a four-step approach:

(a)(i) identifying the theoretical “person skilled in the art”;

(a)(ii) identifying the relevant common knowledge possessed by that person;

(b) identifying the inventive concept of the claim in question, or interpreting the claim where such identification cannot be readily made;

(c) identifying the differences (if any) between the matter cited as forming part of the “prior art” and the inventive concept in the claim (or the interpreted claim); and

(d) examining whether such differences would constitute an obvious step to a person skilled in the art, or whether any degree of invention is required, without knowledge of the claimed invention.

The first three steps of the four-step approach are preliminary or preparatory steps, which seek to enable the patent examiner to assess the final step, i.e. whether the invention is obvious, from the perspective of a person skilled in the art.

Different from the three-step method adopted by mainland China for inventiveness judgment of invention patents, the four-step method adopted by the Intellectual Property Department of the Hong Kong Special Administrative Region for inventiveness judgment of original granted standard patents does not start with determining the closest prior art, but requires identifying the person who is proficient in the relevant technology and the relevant common knowledge possessed by the person. The first step is to clearly define the steps of the relevant technology as the starting point of the inventiveness assessment, which is conducive to the patent examiner to select and evaluate the prior art and common knowledge within a reasonable technical range and to quote them appropriately.

The second step that follows (i.e. identifying the inventive concept of the claim in question) requires the patent examiner to consider the technical solution from the perspective of the overall invention concept, so as to identify the core (or key points, essence) of the invention. After identifying the differences between the inventive concept and the prior art (i.e. the third step), without knowing the invention claimed to have rights, the patent examiner must examine and consider whether these differences constitute obvious steps for people who are proficient in the relevant technology, or whether any degree of invention is required (i.e. the fourth step), so as to finally reach a conclusion on whether an invention is inventive.

It can be seen that the Intellectual Property Department of the Hong Kong Special Administrative Region has restricted the scope of technical fields, people who are proficient in relevant technologies (i.e. technical personnel in the field) and the scope of existing technologies during the substantive examination of the original granted standard patent, effectively avoiding the problem of reducing the recognition of creativity due to the large difference in fields and backgrounds. During the examination process, attention is also paid to the consideration of the overall technical solution to avoid evaluating a certain technical feature separately from the technical concept.

2. Substantive Examination System of Patents in the Macao Special Administrative Region

The substantive examination of invention and utility patent applications in the Macao Special Administrative Region and the examination of designs and new types in the Macao Special Administrative Region are completed by examiners from the Intellectual Property Office of mainland China. The examiners are based on the PCT Treaty, which is familiar to most patent agents and will not be elaborated here.

3. Substantive Examination System of Patents in Taiwan

(1) Regarding the standards of invention patents

The definition of invention patents in the Patent Law of Taiwan is: "An inventor is a highly creative technical idea that utilizes the laws of nature." According to the provisions of the Patent Law of Taiwan, the requirements for invention patents are novelty, progressiveness and industrial applicability. Corresponding to the novelty, creativity and practicality of the mainland.

In terms of novelty, Taiwan also follows the absolute novelty standard. Moreover, Taiwan also adopts the first-to-file principle. Therefore, Taiwan's conflicting application system is basically the same as that of the mainland. As for the exceptions that do not lose novelty, the two sides are roughly the same, mainly including three situations: one is the publication of research and experiments, the second is the public display at an exhibition, and the third is the disclosure by others without consent. The time is also 6 months to file a patent application, and novelty will not be lost.

Regarding creativity, Taiwan's statement is: "When a person with ordinary knowledge in the relevant technical field can easily complete it based on the previous technology before the application", it is not progressive. The difference between the creativity judgment standard in Taiwan and the mainland is only in the statement, and there is basically no difference in actual operation.

(2) Regarding the standard of new patents

The definition of new patents in Taiwan's patent law is: "New refers to the creation or improvement of the shape, structure or device of an article." The scope of protection is similar to that of the mainland, only protecting products but not methods. The standard of creativity is: "When a person with ordinary knowledge in the relevant technical field can easily complete it based on the previous technology before the application", it is not creative. In Taiwan, invention patents are not inventive when they are “easily accomplished”, while utility model patents are not inventive when they are “apparently easy to accomplish”.Although the expressions are different, they both reflect that the creativity standard for utility models is slightly lower than that for inventions.