Fundamental changes affecting patent, trade mark and copyright protection are being discussed in Hong Kong.
The Legislative Council (LegCo) has completed its Bills Committee stage scrutiny of the Patents (Amendment) Bill 2015.The Bill introduces several important changes, including an original grant patent system for standard patents in addition to the existing re-registration system as well as a substantive examination procedure in the short-term patent system.
Meanwhile, work is progressing on Hong Kong ratifying the Madrid Protocol, something which has been under discussion since the end of 2014.
Finally, in December, 2015, the controversial Hong Kong Copyright Bill attracted public attention and gave rise to several rounds of heated debate and protests. The Bill was eventually abandoned after it passed the Second Reading.
To piece together the jigsaw of updates in patent, trade mark and copyright sectors and see a whole picture of IP development in Hong Kong, Managing IP sat down with Ada Leung, the head of HKIPD, to discuss the latest IP development in Hong Kong.
Why would the government initiate the original grant patent (OGP) system after operating the re-registration system for almost two decades?
There are three main reasons. Firstly, we want to catch up with international development. Most jurisdictions already have an original grant patent system, no matter with similar size or not.
Secondly, patent is often seen as a state monopoly. It’s up to the patent office on behalf of state or jurisdiction concerned to decide if an invention is patentable or not. Government can facilitate and encourage development of certain technology with their own policy and this could be reflected in their patent policy. I think this is the reason to motivate other countries to set up their own original grant patent system.
Lastly, Hong Kong has a financial industry-dominated economy, thus people may feel there is a little room for technology and science research and development. Therefore, we hope that professionals or even graduates with technology and science background will be more motivated on innovation and invention after established the OGP system.
How will the OGP system affect the patent protection system in Hong Kong?
It is noted that OGP is an additional choice. The re-registration system is running in parallel with the OGP system.
Thus, it all depends on the business strategy of an applicant. If the applicant is a local company and seeks first protection in Hong Kong, then perhaps OGP will be the priority; if the applicant is originated from other jurisdictions, mainland China for example, or mainly targets mainland China, then I would expect they may continue using the re-registration system.
Will IPD consider to remove the re-registration system?
This is something we will have to keep under review. Currently, we don’t have a plan to dispose of the re-registration system. Before we make a decision, we would like to see users’ preference of the existing system, the new system, or having them at the same time.
Substantive examination was also introduced in the short-term patent system, what’s the purpose of making this change?
Currently, a short-term patent (STP) is granted subject to a formality examination only. Without substantive examination, the validity of the patent is sometimes questioned and it opens opportunity for potential abuse of the system. To be specific, there may be circumstances that some people are aware of that their inventions are not patentable, but they apply for the STP and use it to threaten others.
Also due to its limitation, some of these STPs may not be enforceable. Under the current system, a certificate of STP is not sufficient to prove the novelty and inventiveness of an invention.
Some argue that the introduction of substantive examination will change the initial purpose of the STP system – a faster and less costly route to obtain patent protection. Actually we grant such applications in the first place to cater for needs for a quick protection as before, but we will embark on substantive examination on request of the STP owner only when it’s involved in a dispute. By this, we satisfy both purposes and we hope to find a balance.
What’s HKIPD’s next step when the Patent Bill is passed? Do you foresee a shortage of patent examiners at HKIPD?
We hope to implement the new patent system by the end of next year or early 2018. Of course, we need a lot of resources and time to build our own technical expertise, so we are going to rely on the State Intellectual Property Office (SIPO), the patent office of PRC, to provide assistance in substantive examination in the beginning.
SIPO has already signed an agreement with us and will provide technical support to facilitate our initial operation of substantive examination procedure required in OGP and STP.
What we aim at in long term is to establish our own substantive examination capacity, at least in some areas where Hong Kong has its strength in, for example information and communications technology or biotech. In the meantime, we are also seeking to hire people with a scientific and examination background. We will be doing it later this year.
In 2014, the Government issued a consultation paper to seek public opinion towards Hong Kong joining the Madrid Protocol. What’s the latest update?
We have received over 20 submissions, not a lot, but they represent major trade associations and professional bodies. All users are supportive of the system, while some practitioners have reservations on this. For example, some domestic firms are afraid that joining Madrid threatens to undermine the regional trade mark prosecution business.
But I would say, this situation also happened in other countries when the Protocol was first introduced. We learned experience of other countries who have joined the Madrid System that it won’t harm the domestic market and conversely grows business in the end.
However, things are a little bit special for Hong Kong to join the Madrid Protocol as we are not a sovereign state. The trade mark system in Hong Kong is separate from that of China and we need to work out an arrangement which would best suit the needs and circumstances of Hong Kong. We have already started to discuss the details with Chinese government and sought technical advice from WIPO.
What happened when the government tabled the Copyright Bill in 2012 but then withdrew it?
The concern in 2012 was that the discussion over parody and the secondary creation arose too late to catch up with the LegCo term.
In the beginning, there weren’t many questions about those topics. When the oppositions were getting severe and we were demanded to take those into account in the Bill, the term of LegCo was about to finish. Thus, we had to abandon the amendment due to time constraints, and it failed to proceed to the Second Reading.
Why was the revised Copyright Ordinance dropped again in 2015? What is likely to happen next?
The word that came into my mind is “politicized”. The whole issue regarding the Copyright Bill, especially the digital agenda, has been highly politicized.
This time, we thought that we’ve covered everything concerned by netizens by introducing six additional exemptions to cover parody, satire, quotations, etc. The Bill was under LegCo’s scrutiny for over a year and no objection was received until the resumption of the Second Reading debate. When the Second Reading resumed in early December 2015, the filibusters and opposition activists had been making waves in the society by initiating several rounds of opposition campaigns. This resulted in a very slow progress in the LegCo procedure. Although the Bill eventually did pass through the Second Reading, we did not see the likelihood of securing its passage.
Theoretically the Bill is still on the agenda with debate adjourned, but we have made clear that the government won’t pursue it any further. We are really lagging behind other common law jurisdictions after two rounds of abandonment.
Looking forward, we have to improve the copyright regime and make sure it will take care of the digital environment. It’s not going to be easy, because the very polarized views from different sectors, but we will keep our dialogue with different sectors. Hopefully we can find a balance point which is in the best interest of Hong Kong.