Written by: Haoyu ZHOU (Elliot)

 

Under the principle of “One Country Two Systems” by the Chinese government, Hong Kong (HK) is politically part of China, but is judicially independent for patent protection.

 

Sometimes, companies may forget extending to HK after filing a Chinese patent application, as people naturally thought that a Chinese patent will automatically cover HK. As a matter of fact, obtaining an HK standard patent requires a two-step registration procedure from the Chinese patent application, and unfortunately these procedures are not automatic.

 

HK Stage One:

 

If the Applicant already filed a Chinese Patent Application, a UK Patent Application, OR a European Patent Application (which must designate UK), then the Applicant can choose to extend any one of these patent applications to HK within 6 months from its publication date (non-extendable).

 

This procedure is commonly known as HK Stage One. A Power of Attorney (POA) is not needed by the HKIPD.

 

Interestingly, if the Applicant has, for example, both of a Chinese Patent Application and a European Patent Application, then the Applicant can choose either one or both of them for HK extension, depending on which patent application is more likely to be granted with a broader enforceable scope later.

 

To the contrary, if the Applicant misses the opportunity to extend to HK during the HK Stage One, then the Applicant can file a divisional patent application in China, UK or Europe, and then rely on said divisional application as a basis for HK extension.

 

HK Stage Two:

 

Once the aforementioned Chinese Patent Application, the UK Patent Application, OR the European Patent Application (which must designate UK) is granted, the patentee can extend any one of these granted patents to HK within 6 months from its issue date (non-extendable).

 

This procedure is commonly known as HK Stage Two. A Power of Attorney (POA) is not needed by the HKIPD.

 

If both HK Stage One and HK Stage Two are completed, an HK standard patent will be issued. The claim scope of the HK patent will be the same as the claim scope of the Chinese Patent Application, the UK Patent Application, OR the European Patent Application, whichever is used as a basis for HK extension.

 

HK Direct Filing:

 

Effective from December 19, 2019, it is possible to directly file an HK standard patent application. But in practice, most of the Applicants still choose HK extension instead of direct filing in HK, as HK extension is usually more cost effective and manageable.

 

If you have any questions about IP issues in China, Hong Kong and Macao, please feel free to contact Haoyu ZHOU (Elliot) at patent@foundin.cn.