Since more and more foreign applicants are interested in applying for their patents and protecting their inventions in the greater China region, we would like to summarize the following information about patent filings in Hong Kong, Macau and Taiwan for your reference:
Hong Kong Patents
In Hong Kong there are two available types of patents, standard patent and short-term patent.
I. Hong Kong Standard Patent:
1. Filing and Prosecution
A standard patent application in Hong Kong can be registered on the basis of a Chinese invention patent application through two stage registration procedures:
The first stage: a request for record in Hong Kong, should be filed within six months after the publication of the Chinese invention patent application by the SIPO.
The second stage: a request for registration and grant in Hong Kong, should be filed within six months after the grant of the Chinese invention patent by the SIPO.
The Hong Kong Intellectual Property Department only proceeds with formality examination and does not conduct any substantive examination. There is no particular document needed to be signed.
A Hong Kong standard patent may also be obtained through a similar two-stage procedure on the basis of a EP (designating UK) or UK patent application.
2. Documents Needed for Filing
1) Your instruction letter with the applicant's and inventors' details, including:
a. the name, nationality, residence of the applicant;
b. the name, nationality, residence of the inventors;
2) A copy of publication of the Chinese patent application (or EP (designating UK), or UK patent application), and the Chinese translation of title and abstract.
3. Term of Protection
A Hong Kong standard patent has a term of twenty years.
II. Application for Hong Kong short-term patent:
1. Filing and Prosecution
1.) Direct filing
Applicant can apply for short-term patent directly at Hong Kong Intellectual Property Department.
If the applicant would like to claim priority from a prior application filed in a Paris Convention country or World Trade Organization member territory, the Hong Kong short-term patent application should be filed within 12 months of filing the prior application.
2.) Filing based on Chinese National Phase application of PCT
The applicant shall file his/her Hong Kong short-term application within six months after the corresponding PCT international application has entered into Chinese national phase, or within six months after the State Intellectual Property Office of China issues a Notification of Entering International Application into Chinese National Phase.
In prosecution, if the formalities of the application meet the requirements, the short-term patent is normally granted within about nine months. There is no substantive examination.
2. Documents Needed for Direct Filing
1) Your instruction letter with the applicant's and inventors' details, including:
a. the name, nationality, residence of the applicant;
b. the name, nationality, residence of the inventors;
2) A copy of English or Chinese abstract/specification/claims/drawings, and the Chinese and English translation of title and abstract;
3) The original certified priority document;
4) If the applicant of the application in Hong Kong is not the same as that of the prior application, the scanned Assignment of Priority Right is needed;
5) If the applicant is not the inventor, we need to know how the applicant obtained the design: by assignment, employment or payment;
6) A copy of search report from one of the following searching authorities:
an international searching authority under Patent Co-operation Treaty;
the State Intellectual Property Office of China;
the European Patent Office;
the United Kingdom Patent Office.
3. Documents Needed for Filing based on Chinese National Phase application of PCT
In addition to the documents mentioned in above point 3, we still need:
1) A copy of the international application as published by the International Bureau;
2) A copy of the international search report (whether contained in the international application as published or separately published);
3) The date of entry of the international application into the national phase in China;
4) A copy of the translation of the international application (if any) published by the State Intellectual Property Office of China;
5) A copy of any information published by the State Intellectual Property Office of China concerning the international application;
6) A copy of notification of entering international application into Chinese National phase if the short-term patent application is made within six months after the State Intellectual Property Office of China issues the national application notification.
3. Term of Protection
A Hong Kong short-term patent has a term of eight years if renewed after the first four years.
Macau Patent
In Macau there are two available options of applying for patent, by extension or by direct filings.
I．Option 1: Extension of a Chinese invention patent
1. Filing and Procedures
A Macau extension application for invention patent can be filed by two manners:
Manner One – one step filing
Based on the granting the corresponding Chinese invention patent, the applicant can file a request directly for granting a Macau patent.
Such a request shall be filed directly to the Macau Patent Office within three months from the date of granting the corresponding Chinese patent by the SIPO.
Manner Two – two steps filing
Based on a pending Chinese invention patent application, the applicant can file a request for recording a Macau application once the corresponding Chinese application was filed; and
then within three months from the date of granting the corresponding Chinese patent by the SIPO, the applicant can file a further request for granting the Macau patent.
NOTE: Considering the possible future changes in the Macau Patent Law, we suggest that Manner Two should be used for applying for Macau extension patent to get an early filing. Because the extended patent protection in Macau will for sure be obtained upon the granting of the corresponding Chinese patent application, regardless of any future changes in Macau Patent Law, such as ceasing extension way, however the cost will be increased.
In prosecution of such kind of extension application, Macau Patent Office only proceeds with formality examination and does not conduct any substantive examination.
2. Documents Needed for Filing
1) Your instruction letter with the specific Chinese application's information;
2) The original executed Power of Attorney to be notarized;
3) The original certified "Extracts" and "Patent Specification" from the State Intellectual Property Office of China, which must be filed within three months from the date of granting the corresponding Chinese patent and the time can not been extended.
3. Term of Protection
A Macau invention patent has a term of twenty years.
II．Option 2: Direct filing via Paris Convention
The Macau Patent Office also allows direct filings for invention and utility model patent applications.
1. Filing and Prosecution
If the applicant would like to claim priority from a prior application, invention / utility model patent application shall be filed within 12 months of filing the prior application.
In prosecution, Macau Patent Office conducts examinations on its own according to Macau patent laws.
2. Documents Needed for Filing
1) Your instruction letter with the applicant's and inventors' details, including:
a. the name, nationality, residence of the applicant;
b. the name, nationality, residence of the inventors;
2) A copy of traditional Chinese abstract/specification/claims/drawings;
3) The original certified priority document;
4) The original executed Power of Attorney to be notarized;
5) If the applicant of the application in Macau is not the same as the prior applicants, the original, notarized Assignment of Priority Right is needed.
3. Term of Protection
A Macau invention patent has a term of twenty years and a Macau utility model patent has a term of ten years.
Taiwan Patents
1. Filing and Prosecution
Pursuant to the relevant provisions of Taiwan Patent Law, for claiming a foreign priority, the Taiwan invention / utility model patent application shall be filed within 12 months of filing the prior application.
Also, it should be noted that Taiwan is NOT a PCT member so it is not possible to file any patent application through the PCT route. However, Taiwan accepts any patent application, including an invention application and a utility model application, which claims priority from a corresponding PCT application.
Generally, where you need to file applications both before SIPO and the Patent Office of Taiwan for one invention and let us handle these two filings, we need translate the patent documents just once. For the Chinese filing, we can translate and file the translation before SIPO. For the filing in Taiwan, we will let our associated Taiwan firm review our translation and modify those technical terms that are different in simple Chinese used in China and tradition Chinese used in Taiwan, and then the Taiwan firm will file the application in Taiwan.
In such a manner, a cost-effective filing operation can be achieved for clients.
In prosecution, Taiwan Patent Office conducts examinations on its own according to Taiwan patent laws.
The Taiwan Patent Office accepts conversion between invention and utility model patent application. For utility model applications, conversion is possible within thirty days from the date of the decision refusing the original application. Conversion of patent applications into utility models may be requested within two months from the decision of refusal. Once a grant decision has been taken, conversion is no longer possible. The filing date of the original application will be taken as the filing date of the converted application.
2. Documents Needed for Filing
1) Your instruction letter with the applicant's and inventors' details, including:
a. the name, nationality, residence of the applicant;
b. the name and nationality of the inventors;
2) A copy of Taiwanese specification/claims/drawings;
the documents could be filed within four month after filing.
3) The original certified priority documents;
it should be filed within 16 months from the priority date.
4) The original executed Power of Attorney;
the documents could be filed within four month after filing
3. Term of Protection
A Taiwan invention patent has a term of twenty years. Some patents may further be eligible to seek patent term extension at the maximum of five years.
A Taiwan utility model patent has a term of ten years.
It is hoped the above information will be helpful and sufficient, and we are very much willing to provide our assistance to you on filing your applications in Hong Kong, Taiwan and Macau.
The above information is for your reference only.
Should you need more information or any assistance or have any further questions please do not hesitate to contact us. We would be happy to assist.
