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Patent Knowledge Base

The First Stage In The Hong Kong Patent Application Process Explained

When applying for a standard Hong Kong patent, there are two main stages of the process. Here, we will discuss the first stage including where, when and what to file. Due to the complex nature of the patent application process, we strongly recommend hiring an experienced patent agent or lawyer specializing in patents and trademarks.


Where to File

In Hong Kong, the grant of a standard patent can be made by one of these three patent offices, known as designated patent offices.

  • The State Intellectual Property Office of the People’s Republic of Chine
  • The United Kingdom Patent Office
  • The European Patent Office where the patent designates the United Kingdom as the designated patent area


In case of a standard patent application filed in Hong Kong, an administrative region of China, the process occurs in two stages, namely:  (The applicant files the following documents in two successive stages)

  • In stage 1, a formal request to record the designated patent application (i.e., Chinese, European Patent, or United Kingdom Patent-published)
  • In stage 2, a formal request for registration and grant in either of these designated patent offices


Keep in mind that there are processes and papers as well as pros and cons required in these two stages. While these can be conducted on a do-it-yourself basis, these can become overwhelming for a non-lawyer or non-expert in patent applications.


When to File

The request to record a Hong Kong patent application should be made within six months after the publication of the patent application in one of three designated patent offices.


What to File

The patent application process is paper-heavy in the sense that numerous documents are required. These include but aren’t limited to:

  • Patents Form P4 for the request to record
  • Certified copy of the published designated patent application
  • Abstract of the patent in both the Chinese and English languages
  • Title of the invention in both the Chinese and English languages
  • Full name and address of the applicant


The applicant may also be required to provide a copy of an assignment (i.e., if the applicant isn’t the person stated in the application) or a statement identifying the inventor (i.e., in case the inventor isn’t named in the application).


Also, the applicant can appoint an patent agent. In this case, the agent must notify the Registrar of his address where he resides or performs business activities.  Of course, the agent will require fees for his services and these fees aren’t included in the filing and advertisement fees required by the designated patent offices.


Currently, the filing fee is HK$380 and the advertisement fee is HK$68. These amounts apply within 30 days of the earliest filing of any part of the applicant’s request to record.


Even for applicants who have completed these steps, there will likely still be issues concerning the patents. These issues can range from the novelty to the usefulness of the invention, as well as in the technicalities of the filing process. Again, an expert in the Hong Kong patent process will be useful in ironing out the kinks.


As the patent application needs professional knowledge and experience, we suggest hiring an experienced patent agent for individuals and organizations. For details of the Hong Kong patent registration, please contact us for free consulation.



CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent and

Hong Kong Trademark Application & Related Services


Points of Concern For Short-term Patents

Short-term patents are also designed to provide protection for inventors and their inventions against possible unauthorized use of their products and/or processes. Keep in mind that their application in one of the designated patent offices can be problematic, not because of bureaucratic inefficiency but, more often than not, because of the complexity of the processes and papers required.


With that in mind, here are a few important points to consider before filing your short-term patents application in Hong Kong.


Hiring an Agent

Of course, filing a patent application can be done without an agent or a lawyer acting in behalf of the applicant. The do-it-yourself approach can yield effective and efficient results since the State Intellectual Property Office, one of three designated patent offices in Hong Kong, provides guidance on the process and papers required.


But there are also numerous benefits in appointing a Hong Kong patent agent to handle the Hong Kong patent application. For one thing, the agent can deal with the nitty-gritty details of the patent application, especially the parts that require technical and legal proficiency. The applicant then can concentrate on polishing the patent, so to speak, such that it may have commercial uses and possibly bring in a profit.


For another thing, the agent has the knowledge, skills and connections to facilitate the approval of the designated patent application. The connections are crucial in technical areas like drafting the patent documents – drafting is a highly technical skill that not many inventors possess.


Applicants are well-advised to research into the credentials of the agents, nonetheless. Looking into the agents’ backgrounds, track record, and expertise is a must, especially in high-stakes technology patents. The agent can file the patent in behalf of the applicant but the latter must have a valid address in Hong Kong for the service of documents.


The appointed patent agent should notify the Registrar of the address in Hong Kong where he either resides or conducts business activities. In fact, the applicant should ideally make it a point to visit the agent’s office as part of the background check.


Determining Uniqueness of Invention

Keep in mind that the patent being applied for should be unique, a task that can be carried out through the Internet. The Intellectual Property Department provides the general public with an online search system where anybody can search for both patents granted and published patent applications. The Hong Kong Intellectual Property Journal also contains the information and, in fact, the request for patent applications are first published here.


The applicant can determine whether a prior art has similarities or sameness as the planned patent application. Keep in mind that patent offices in Hong Kong and in other countries and territories have specific guidelines regarding uniqueness and novelty, and these guidelines can be overwhelming. This is where the usefulness of a Hong Kong patent agent come in.


CtR Intellectual Property Co. is a Hong Kong Patent Application Grant authorised patent agent offering professional patent and trademark application & related services. For details of the Hong Kong patent application, please contact us for free consulation.



CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent and Trademark Application & Related Services


Who Can Apply For Hong Kong Patents?

First off, keep in mind that applying for a China patent and in other countries doesn’t automatically provide patent protection in Hong Kong, and vice versa. Indeed, it’s important to file the appropriate patents in countries where the inventor wants his or her invention, whether a product or a process, to have protection!


With that being said, the important question is: Who can apply for Hong Kong patents? Under the Hong Kong trademarks laws, there are three types of applicants – individual, incorporated, and unincorporated. The applicant types are clearly stated on the Hong Kong patent application forms including Forms P4, P5 and P6 as well as P19.



The “Individual” applicant type refers to a natural person or natural persons applying for the patent jointly. The natural person may or may not be a resident and/or a citizen of Hong Kong, such as in cases where an inventor wants patent protection for his invention in Hong Kong.


There are also cases when a sole proprietorship and a partnership, both of which should be established in Hong Kong, files for patent protection. The rules for the names to be stated on the application are as follows:


  • For a sole proprietorship, the name of the sole owner and the name of his company should be stated but the box marked “Individual” should be checked. For example, Jack Chan trading as Chan & Co.


  • For a partnership, the names of the partners followed by the legal name of the company should be listed. At least two partners should be listed in case there are several partners. Again, the box marked “Individual” should be checked. For example, Jack Chan and Michael Yeoh trading as Chan & Yeoh.


The patent application is considered as a joint application so there’s joint ownership of the patent, if it’s approved.



For corporations incorporated in and outside of Hong Kong, the box marked “Incorporated” should be checked. Be sure to indicate the country or territory or area of incorporation where the corporation was established in the appropriate field of whatever form being used.


The information may also be entered by the Register of Patents in its database. The purpose: to enhance the transparency of the public records and to identify the patent applicant.



Emphasis must be made that unincorporated associations and organizations aren’t considered as legal persons under the laws of Hong Kong. But an unincorporated entity can have legal capacity to own property including patents, a law in other countries and territories recognized in Hong Kong. In this case, the “Unincorporated” box should be marked for patent application purposes.


In Hong Kong, the Patents Registry of the Intellectual Property Department handles the Hong Kong patents application process. The Registrar of Patents has the legal authority to examine patent applications for their completeness, correctness, and compliance with the formal requirements. However, emphasis must be made that the Registrar of Patents doesn’t perform substantive search and examination of patents in terms of their inventiveness and novelty.



CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent and Trademark Application & Related Services


Who To Hire: A Local Or A National Attorney When Filing For A U.S. Patent Application?

While the United States Patent and Trademark Office (USPTO) doesn’t actually recommend hiring a patent lawyer when filing for a patent application, experienced inventors highly recommend it for newbie inventors. The reason: The patent application and maintenance process including settlements and litigations can be complicated so much so that a non-lawyer can find it overwhelming. Even a single mistake can mean financial loss for the inventor, such as when other steal and profit from his inventions.


The next question: Who should you hire – a local lawyer or a national lawyer?


Advantages of a Local Lawyer


If you’re more comfortable working with a local lawyer, then hiring one makes sense. You may have established a good professional relationship with him, researched his background and track record, and relied on a mutual friend’s recommendation, among others. You may just like the convenience of meeting with your lawyer at a moment’s notice, so to speak, to present your prototype or process.


During these meetings, you can actually demonstrate your invention and show its novelty, utility and non-obviousness. You appreciate the proximity of your lawyer’s office in setting up appointments.


Advantages of a National Lawyer


But you may want to look farther than your neighborhood for many reasons. First and foremost, the patent law of the United States has a national (i.e., federal) scope so it’s neither governed nor regulated at the state and county levels. By its nature, patents are valid in the entire country although their validity will only be recognized in the United States, not beyond its borders, as a general rule.


The bottom line: The patent protection you’re seeking will have a national scope and, as such, hiring a local attorney particularly a member of the state bar isn’t as relevant as you may think it is.


There’s also the fact that patent attorneys should be registered with the USPTO for them to be recognized as authorized counsels of the inventors they represent. Furthermore, they are authorized to represent their clients in any place in the world.


This means that where the USPTO is concerned, you and your lawyer don’t even have to meet in person at any time during the patent application process. With technologies like emails, video calls, and messaging, you and your attorney can discuss issues, provide updates, and make decisions without meeting face-to-face.


In fact, foreign nationals can file U.S. patent applications through their U.S. attorneys without the need for face-to-face meetings! Every information can be transmitted and received through electronic means, not to mention that patent applications can be made online.

Your attorney’s location isn’t an issue with patent applications. The pertinent documents including the description, drawings and diagrams can be emailed in the required format. The reply from the USPTO can also be done in the same manner.


Instead of worrying about the proximity of the attorney to your home or office, you should concentrate on the appropriate qualifications.


For details of the U.S. patent application, please contact us for free consulation.



CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent and Trademark Application & Related Services


What To Expect During A Patent Infringement Lawsuit

Patent infringements are a common occurrence, especially in a world where new products are designed, manufactured, and sold worldwide and where copycats are a dime a dozen. Many of these infringements become lawsuits or litigations that affect both the complainant and the defendant. The effects can be surprising, too, such as when the complainant ends up shouldering huge litigation expenses that could have been avoided if an amicable settlement was made. Here take a look on the U.S. patent infringement lawsuit for ease of understanding.


The bottom line: Be careful about filing a patent infringement lawsuit because it can have unforeseen consequences. But if you have a great patent lawyer and you have just cause, then you may well benefit from filing it. Here are a few things that you may want to know.


Specific Venue


All patent infringement actions have to be filed in the United States District Courts, the general courts of the country’s federal court system. The venue makes sense because patents are considered national in scope and, thus, their litigations should be heard in a national (i.e., federal) court.


Since there’s at least one judicial district for every state, as well as in the District of Columbia, Puerto Rico, Guam, the Northern Mariana Islands, and the United States Virgin Islands, the issue of geographical location shouldn’t be a big deal. Currently, there are 94 judicial districts in 50 states and the territories.


Prescription Period


The patent infringement action should be filed within six years, maximum, after the date in which the infringement occurred in order to recover damages. Unlike other statutes of limitations, furthermore, the six-year period can be extended when the parties agree to it. For example, a tolling agreement can be in effect while the settlement negotiations are in progress.


But the six-year prescription period cannot be extended by reason of concealment or fraud. For example, if you discover that your invention was incorporated in a machinery 10 years after the fact, you’re unlikely to sue for damages if the infringer covered up the use.  We have to say that the rules and regulations of patent infringements don’t automatically favor the patent owner or holder.


Judge’s Decision


While patent infringement lawsuits can be under a jury, the judge alone has the responsibility to interpret the claims for patent ownership made by the plaintiff and the counterclaims of the defendant. The judge and/or jury examines the patent and makes comparisons of the elements made in the lawsuit, said comparison being between the patent’s design and the infringer’s product or process.


From the comparisons made, the judge or jury then decides on the merit of the plaintiff’s claims actually and significantly cover the defendant’s product or process. In case of a read on, the legal term used to describe the plaintiff’s claim covering the product or process, then an infringement offense can be considered.


CtR Intellectual Property Co. is a Hong Kong Patent Application Grant authorised patent agent offering professional patent and trademark application & related services. For details of the patent applications, please contact us for free consulation.



CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent and Trademark Application & Related Services


A More Comprehensive Look At The Definition Patent Infringement

In the United States, U.S. patents grant their owners the exclusive manufacture, use and sale, among other ownership rights, of the inventions. These are considered as grants of limited monopoly granted to inventors by the federal government, specifically by the U.S. Patent and Trademark Office (USPTO). But in a world filled with copycats, patents aren’t always respected by the non-holders, an action that can result in patent infringement.


Prohibited Acts


Did you know that patent rights are older than freedom of speech and freedom of the press? Patent rights are actually included in the U.S. Constitution, which was adopted in 1787, under Article I, Section 8! Many of the basic American rights were only established in the Bill of Rights in 1791 or 14 years later.


Through the years, the implementing rules and regulations of patent rights changed in accordance with the times. In the 21st century, these are governed by 35 United States Code, a federal law.


Why are these things important for an inventor to know? If you read the code in its entirety – or at least, gain a basic understanding of its provisions – you will have a deeper understanding of patent infringement.


In a nutshell, patent infringement is the commission of a prohibited act regarding a patented invention without the current patent holder’s or owner’s permission. Keep in mind that patents are property and, thus, these can be bought and sold – the current patent owner must be aggrieved by the commission of the prohibited act. The act can take the forms of making, using, selling or offering to sell, and importing the invention or its equivalent.


Emphasis must also be made that no patent infringement action can be started without a valid patent issued. But inventors can secure pre-grant protection under 35 U.S.C. § 154(d) or file a provisional patent application (PPA).


Wilful and Unintentional Infringement


Wilful patent infringement refers to the deliberate commission of the prohibited act on the part of the offender. Unintentional patent infringement isn’t an excuse for committing it, an adjunct to the principle that ignorance of the law doesn’t excuse the offender.


The former typically involves the offender ignoring the fact that a patent for the product or process already exists and going ahead with its manufacture, use or sales. Many copycats are guilty of this type of patent infringement.


The latter can arise from the cliché that great minds think alike. In many cases, two inventors create essentially the same invention even when they work independently (i.e., the other has no knowledge about the other’s work). In these cases, the general rule is that the inventor who applies for a patent and who has sufficient proof that he was the first to make the invention will be awarded patent rights.


Do you have issues about patent infringement? You should consult a patent attorney for legal advice ASAP!


It is also vital to submit your patent application ASAP. As the patent application is quite professional, we suggest hiring an experienced patent attorney for individuals and organizations. For details of the patent application, please contact us for free consulation.



CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent and Trademark Application & Related Services


Starting On The Right Foot With Your Design Patent Application

The United States Patent and Trademark Office (USPTO) has strict requirements regarding United States patent applications for good reasons. Patents, after all, grant their inventors and/or owners the exclusive right to make, use and sell the products and/or processes covered. The USPTO are then extremely careful in granting patents and, in the process, can reject applications based on the smallest detail.


The bottom line: You have to start on the right foot when preparing your design patent application. You should ideally hire an experienced patent lawyer for this purpose. You must, however, still be on top of things, so to speak, by learning the basics including the ones discussed below.


Submitting the Right Documents


The USPTO provides two options for filing design patents: first, via paper application; and second, through its website (online). If you’re filing via the first option, you have to send the application documents by Express Mail. If you’re using the second option, you must convert these documents including the application and drawings to PDF format; there are electronic forms available on the USPTO website.


In both cases, you have to submit certain documents including:

  • The specification, a short written document
  • The drawings showing the design’s appearance, usually from several angles
  • The Declaration, the designer’s oath
  • The Design Patent Application Transmittal, a cover sheet
  • The Fee Application Transmittal Form, and
  • The payment for the filing fee (e.g., cashier’s check)


Be sure to read and understand every line of these documents as a precautionary measure. You don’t want your patent application returned or rejected due to a clerical error, among other possible mistakes. You also want to increase the chances of your request patent being granted, not to mention that the USPTO generally doesn’t give refunds even for rejected applications.


Getting the Entries Right


Due to the complexity of the documents, especially the drawings, you should seriously consider hiring experts including a patent lawyer and a graphic designer. You will still retain ownership over the patent once it’s granted obviously.


For the specifications document, here are a few things to get you started:

  • Write a couple of boilerplate sentences announcing your intention for a design patent in the preamble.
  • Make the specification, the section where you make an introduction of your design by name, as simple as possible.
  • Indicate previous patent applications related to your current application in the Cross References to Related Applications.


You can be descriptive with your invention description in the Feature Description field but avoid using flowery words, exaggerations and the like.


For the drawings, keep in mind that the USPTO prefers technical and stylized drawings of inventions. Every element, from stippling and linear shading to using colors and patterns, has a specific meaning so be careful about submitting haphazard drawings. While you can initially submit informal drawings, you will still be required to provide formal drawings by the USPTO examiner before your United States pattent application can be acted on.


As the patent application is quite professional, we suggest hiring an experienced patent attorney for individuals and organizations. For details of the design patent application, please contact us for free consulation.



CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent,

Trademark Registration & Related Services


PPA Basics: The Concept Of Reduction To Practice

The provisional patent application (PPA) is an interim document designed to preserve the patent owner’s rights to the invention while in the process of determining whether to file a regular patent or not. Many inventors file it since it’s a relatively straightforward, simple and affordable way of protecting their rights over and interests in their inventions.


Reduction to Practice Defined

It’s the equivalent of the concept of “reduction to practice” typically manifested in two ways:


  • By the production of a physical embodiment of the invention, also known as actual reduction to practice. Examples include a prototype of a device, a composition of the matter, and the performance of a method to confirm its results.


  • By filing a U.S. patent application with the United States Patent and Trademark Office (USPTO), known as constructive reduction to practice.


The actual physical construction for a product or the performance of the steps for a process is meant to show others that, indeed, the subject matter being patented can do what it’s supposed to do. The concept of reduction to practice then encompasses actual demonstration, operation and testing for the invention’s actual use.


Importance of Reduction to Practice

Every savvy inventor knows that reduction to practice is a crucial element in establishing novelty and non-obviousness in a patent application. You, the inventor, has to provide proof that indeed you are the original inventor of the subject matter and the PPA is a strong proof.


The PPA is also important in establishing patent priority and, thus, rightful and legal ownership over the invention. Under U.S. patent laws, the inventor owns the patent registration rights at the time he/she reduced the invention to practice, thus, it’s important for inventors to be the first to apply the reduction to practice doctrine.


In contrast, most countries grant patent registration rights to the first person who files for the applicable patent.


The reduction to practice concept prevents other persons from stealing, borrowing, and selling prior inventions created by the original inventor even if the latter haven’t filed for a regular patent. The PPA can establish both actual and constructive reduction to practice since it must contain a description and drawings of the invention. The inventor can also include other documents to establish ownership over the invention, such as formal drawings and methods of operation.


If the invention’s practical utility isn’t evident, the USPTO examiner may request for a testing and demonstration. You should take it into account when filing for a PPA to establish reduction to practice on your part.


A good rule of thumb to remember: The less theoretical, the less abstract and the simpler the invention, the less need for showing practical utility. Brand-new technologies, for example, usually require more proof of utility while there’s little to no demonstration of utility required for improvements on existing technology.



For details of the patent application, please contact us for free consulation.


CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

The Tug-of-war Over Patent Rights Ownership Between Inventor And Employer

Who is the rightful and legal owner of an invention: The employee who invented it or his employer? The answer depends on the agreement between these parties although other factors are also considered.


For the inventors, the answer can mean the difference between being recognized – and possibly getting rich – for their inventions and being consigned as a mere cog in the machine. For the employers, it can also mean being recognized as a pioneer and leader in the field on one hand and being left behind by the competition on the other hand.


With such high stakes, which side does the law favor?  Take note that patents are articulated under the U.S. Constitution (Article I, Section 8, Clause 8) and governed by the Patent Act.


Inventors Typically Have Patent Ownership

The general rule in the tug-of-war between inventors and employers: You, if you’re the inventor, own the patent rights to your invention created during the course of your employment. You can apply for a patent with the U.S. Patent and Trademark Office (USPTO); only a natural person, by the way, can apply for it and, thus, organizations cannot.


But there are exceptions to the general rule. You don’t own the patent rights under either of the following circumstances:


  • You signed an employment agreement with your employment wherein you assigned invention rights (the doctrine of pre-invention assignment); or
  • You were specifically hired either to create the specific invention or for your invention skills (the work-for-hire doctrine); said employment may or may not come with a written agreement.


In practice, either of these two exceptions to the rule nearly always applies. This means that the employers hold patent ownership to their employees’ inventions, a fact reinforced by the signed and notarized pre-invention assignment agreements at the time of the hiring. The assignment agreement typically comes as a bundle, so to speak, with other employment documents like confidentiality agreements.


Employers Can Have Shop Rights

Let’s assume that you retained patent ownership over your invention. Keep in mind that it isn’t an ironclad ownership either because your employer can still have shop rights. The term refers to the limited right of the employer to use your patent without paying you, either in cash or in kind.


Shop rights occur when you, the employee and inventor, uses your employer’s resources including the machinery, facility and network in creating your invention. The doctrine itself is flexible in its application in the real world but it typically allows your employee the use of your invention internally. Your employer can neither assign nor sell your invention to third parties; otherwise, it can be considered as infringement of patent.


If you’re an inventor seeking employment or already in employment, you are well-advised to consult with a patent lawyer about your employment contracts including the assignment agreement. You have to protect your inventions from infringement, even by your employers, if that’s what you want.



For details of the patent application, please contact us for free consulation.


CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

Are You The Rightful Owner Of Your Invention For Patent Application?

What would you do if your original idea was stolen by another person or group? But before you answer the question, you have to answer another question, “Do you legally own the patent rights over the product, device or item?”


Granted by the USPTO

Everybody has the right to create things. But keep in mind that merely creating a thing doesn’t confer legal rights including ownership over it, even when others have profited from it. You must actually have a valid patent over the subject matter, whether it’s a process or a product.


Patents are rights of ownership granted by the United States government, specifically the U.S. Patent and Trademark Office (USPTO) to inventors. The patents are intended to exclude others from making, using, and selling, even importing, the particular inventions without the inventors’ express permission. In case of infringement, the aggrieved inventor can file an infringement lawsuit.


If you haven’t submitted your patent application or you haven’t been granted a full patent for the subject matter, then you will likely not be considered as its legal and rightful owner. You can, however, apply for a provisional patent but even it has its limitations so we suggest getting a full patent over your invention.


Inventorship and Ownership Are Different

There are also instances that the inventor and original holder of the patent isn’t considered as the owner of the patent. This is because the concepts of inventorship and ownership are different under patent law.


You, the inventor, may be listed on the patent application filed with the USPTO but you may not be considered as its current valid owner. You may have relinquished your rights over it, a case that can happen when you work for a company and you created the invention while you were its employee at the time. In this case, you cannot sue for patent infringement since the patent is usually owned by the company.


If you were directly paid by another person or group to create an original invention, you may or may not own the resulting patent. You have to double check the agreement before signing it, especially if you want to own the patent while the other party has certain legal rights over the resulting product.


And then there’s the matter of being a solo inventor or a joint inventor of a patented idea or thing. If you came up with the idea or created the product completely on your own, then you are considered as a solo inventor. You shouldn’t be anybody’s employee, too.


If the idea or thing was created by two or more people, then they are joint owners of the patent. The names of all the inventors can be listed on the patent application and, in the absence of an agreement to the contrary, every inventor own a pro-rated and undivided interest in the invention.



For details of the patent application, please contact us for free consulation.


CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services