Intellectual Property Regime and the Patents System in Hong Kong

Axiom can help you keep up with the ever changing developments and legal implications to your biopharmaceutical company

Hong Kong – leading center of commerce, trade and innovation

As one of the leading international financial centers, Hong Kong is a prime location for many multinational corporations. Hong Kong is also a center of commerce, trade and innovation, backed by an effective and transparent intellectual property (“IP”) legal regime, which covers technology transfer, licensing, franchising, merchandising, and copyright trading.

IP protection and economic development

IP is the name normally given to a group of separate intangible property rights which encourage, protect, and reward innovation and the result of intellectual effort. The common types of IP in Hong Kong are:

• Trademarks
• Patents
• Designs
• Copyrights
• Layout-design (topography) of integrated circuits
• Plant variety rights
• Trade secrets and know how
• Domain names [1]

 

The protection of IP encourages business activities in the sense that such protection helps creators protect their creativity and ensure their hard work can be rewarded and recognized. The lack of protection of ideas may lead businesses and individuals to focus less on research and development because they would then not be able to obtain the full benefits of their inventions.

Reliable legal framework

Hong Kong has a set of well-established local laws which fully comply with the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights.

The Intellectual Property Department advises the Commerce and Economic Development Bureau on policies and legislations relevant to IP protection and provides legal advice to other government departments on IP matters. The Customs and Excise Department is responsible for enforcing criminal infringements of IP rights.

Each of the types of IP mentioned above is governed by its own ordinance, rules and/or notice. Amendments have been made to, for example, the Patents Ordinance and the Trade Marks Ordinance recently.

Biopharmaceutical companies and the patents system

IP is arguably a biopharmaceutical company’s most valuable resource. A company’s future success may depend on the protection of it as it can offer substantial commercial advantages.

Developing a new drug and successfully bringing it to market is not an easy process. It is risky, lengthy and expensive. Research has shown that biopharmaceutical companies spend as high as nearly US$3 billion to bring each of their new drugs to market.[2] Patents provide a commercial monopoly regarding an innovative product or process. It is a negative right which gives the owner the right to prevent others from making, using or selling the invention without permission.

In Hong Kong, patents are governed by, inter alia, the Patents Ordinance and the Patents (General) Rules. Import and export compulsory licenses for patented pharmaceuticals are in place, respectively, to enable Hong Kong to make use of the system under the Protocol amending the TRIPs Agreement (the “Protocol”) to import medicine in situations of, inter alia, national emergency and to allow manufacturers in Hong Kong to make use of the Protocol to make and export pharmaceutical products to other WTO members who declare that it is in similar situations.

Recently, Patents Registry (the “Registry”) in Hong Kong launched a new original grant patent system, introducing a new and direct local original grant patent route for filing standard patent applications and refining the existing short-term patent system.

As a result of the changes, applicants may file patent applications directly with the Registry. An original grant patent system application is subject to substantive examination by the Registry to determine the patentability (novelty, inventive step and industrial applicability) of the invention.

In addition, the refined short-term patent system has increased the maximum number of (independent) claims in the same application from 1 to 2, if they are related to one single invention. Short-term patents may also be subject to post-grant substantive examination by the Registry upon request by certain interested parties. Prior to commencing enforcement action of an unexamined patent, the owner has to obtain a certificate of substantive examination. Moreover, a short-term patent owner threatening to sue for infringement on an unexamined short-term patent must provide the alleged infringer with sufficient information to identify the patent upon request.

The laws and regulations around patents which are intrinsically linked to the development process of drugs by biopharmaceutical companies as we can see have recently evolved and indeed do constantly evolve. Special attention must be paid to the small details in these rules which must be thoroughly studied. Axiom’s team of expert lawyers in IP are kept on top of the legal developments in this area and are able to assist you in addressing your issues around IP, inter alia interpreting the law professionally and helping you with your applications.

Find out how Axiom can help you

IP is a dynamic and complex area which is affected by a number of local and cross-border regulations. Axiom’s legal advisors have deep experience in IP and trade mark law, and can help you solve your IP issues. Find out how working with Axiom and our legal consultants can help your business grow.

Abstract

Hong Kong is a center of commerce, trade and innovation, backed by an effective and transparent intellectual property legal regime. Patents are undoubtedly highly useful to biopharmaceutical companies for protecting their inventions. IP is dynamic and complex: Axiom’s legal talents can assist you in growing your business.

^[1] https://www.ip.gov.hk/en/types-of-ip.html

^[2] https://jamanetwork.com/journals/jama/article-abstract/2762311