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

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How to protect your software in China?

In China software piracy is one of the big problems. What can be done to protect software?

Copyright

Software is specifically mentioned in article 3 (8) Copyright Law as protectable subject matter.

Although copyrights do not have to be registered, since China is a signatory of the Berne Convention the enjoyment and the exercise of copyrights shall not be subject to any formality, according to article 5 (2) of this treaty, it can be wise to register:

• A registration certificate issued by the software registration institution, recognised by the copyright administration department of the State Council, is a preliminary proof of the registered items, see article 7 Regulations on Computers Software Protection;
• Elliot Papageorgiou of Rouse & Co. International gives another argument: Registration and publication of the software and identity of the owner in the copyright bulletin serves as notice to infringers and raises the presumption that the infringer was "knowingly" infringing copyright. If this is the case, the defendent cannot base his claim on article 30 Regulations on Computers Software Protection, that he neither knows nor has reasonable grounds to know that he infringed, in which case the infringer can, after paying reasonable remunaration, continue to use the copies, if the cease or destruction of these would cause heavy losses to him.

Article 29 Regulations on Computers Software Protection gives the limitation that "[t]he development of a piece of software which is similar to a pre-existing one due to a limit of alternative forms of expression does not constitute an infringement of the copyright in the pre-existing one." In other words, if there is only one technical solution possible, it is not copyrightable. Professor Hugenholtz called this (and I paraphrase) the monopoly of suboptimal technical solutions.

Patent

Article 22 Patent Law states: Any invention or utility model for which patent right may be granted must possess novelty, inventiveness and practical applicability.

• Novelty means that, before the date of filing, no identical invention or utility model has been publicly disclosed in publications in the country or abroad or has been publicly used or made known to the public by any other means in the country, nor has any other person filed previously with the Patent Administration Department Under the State Council an application which described the identical invention or utility model and was published after the said date of filing.
• Inventiveness means that, as compared with the technology existing before the date of filing, the invention has prominent substantive features and represents a notable progress and that the utility model has substantive features and represents progress.
• Practical applicability means that the invention or utility model can be made or used and can produce effective results.

According to Papageorgiou the requirements that a patent needs to be for the purpose of resolving a technical problem and capable of producing a technical result by technical means are analogous to these requirements stated by article 52 (3) European Patent Convention. However, as Wikipedia's article 'Software patents under the European Patent Convention' makes clear there is a plethora of interpretations. What China's interpretation is I am not sure yet. To be continued.

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