Monday, March 07, 2011

Patents in Hong Kong

Hong Kong has for many years had only a deposit-type patent system. Applicants re-register patents covering China or the UK, (including European Patents designating UK) and they are granted without substantive examination. It is a simple and cheap 2 step process.

But there is a growing call for change from Hong Kong business. In the past the government has said HK does not need a full system, citing high cost, lack of patent examiners and current user satisfaction. It is not clear that these are real objections, since cost could be covered by the fees, examination can be outsourced to other countries and current users are mostly MNCs. HK inventors have largely been ignored.

At a seminar to discuss whether HK should have a full patent system last Monday at HK's Science Park, friends of IP Komodo told of the differing views of industry and lawyers. Academics and SMEs have for some time complained that such a basic patent system stifles the ability of local businesses to get proper patent advice. There are lots of solicitors who claim patent expertise. A small number of firms employ patent attorneys who are invariably foreigners. A local patent attorney profession does not exist (although a lot of lawyers spend a lot of time arguing otherwise). Those businesses that have a lot of volume often send their patent drafting and examination work offshore. Ironically this includes many HK government funded bodies (that's HK taxpayer money being paid to attorneys abroad bypassing the struggling local profession).

What the Hong Kong government is missing is that patents are not local. HK businesses are interested in HK patents of course, but in the context of today's globalised world they need a base home patent upon which they can build a global patent family. The lack of a local first filing and substantive examination system means no local expertise can be built up, so all the work must go offshore, perpetuating the cycle.

Thus there was an evident split at the seminar last week, between the solicitors who are comfortable with the status quo and businesses who complained that they need a full patent system. Much as HK hates comparisons with Singapore, this one does bear looking at. A healthy patent system and patent attorney profession exists there 15 years after Singapore launched its full patent system. And Singaporeans file many more US patents than HK nationals, despite being a smaller economy.

The HK government has set innovation as a key policy goal (now it is clear that finance is not a sufficient foundation for an economy). Yet it leaves important components like a full patent system out of the innovation ecosystem. Mark Twain put is thus: "A country without a patent office and good patent laws is just a crab and can't travel any way but sideways and backwards" in A Connecticut Yankee in King Arthur's Court in 1889.

Guest post by IP Komodo Dragon


Anonymous said...

I am a HK solicitor and I was at the Patent Forum at the Science Park last week.

YOu made the point that solicitors are comfortable with the status quo. In fact, at the breakout session for legal/patent practitioners, many solicitors argued for the need of a change in the patent system. Only a few solicitors, such as those on the Law Society's IP Committee, see nothing wrong with the current system. They currently have the lion's share of patent work in HK. More solicitors argue for the need to change the current system than those supporting it.

Unfortunately, when the report of the breakout session was made to the general session, the report did not accurately reflect the actual discussion but concluded that the group felt that there was no need for wholesale changes.

Gerard said...

Interesting article, thank you for sharing this info

Gerard said...

Intersting, thanks for sharing!

IP Dragon said...

Great point, thanks for adding that. Would the HK IP profession have much more work if it encouraged a full patent system, as it could then service many more HK businesses who would seek patents around the world? Right now the work the profession has is basic reregistartion work while the limited amount of high end work often goes offshore.

Anonymous said...

That's right.

Hong Kong does not produce patent drafters because of its recordation system. If we have a full system, HK patent drafters will be able to help local clients prepare applications in HK and abroad. Right now, that work is handled by patent drafters trained abroad so they have little incentive to urge a change in the system.

We need to train patent drafters locally to capture some of this work.

The IPD says that there is no demand for a full patent system in HK and these patent drafters agree as it is in their interest to minimize competition. So, the IPD claims that there is no need for a full system.

We are asked by inventors about filing HK patents but when told there is no originally granted patents in HK, they naturally turn to China or the US to file their applications so in that sense, it is argued that there is no demand in HK for such service.

My assumption is that having OPG in HK will change that. To quote the film, Field of Dreams: "If you build it, they will come."