OGP or not to OGP? That is the question…

11 December 2020 By Daniel Holt

Did you know?

Almost a year ago, on 19 December 2019, the Hong Kong government introduced a new route for obtaining patents in Hong Kong. As a result, there are now three ways in which a patent may be obtained in Hong Kong:

1)     registering a UK, European or Chinese patent;

2)     filing a short-term patent; or

3)     filing an original grant patent (OGP)

Why this matters to you?

The new original grant patent (OGP) route thus runs in parallel with the existing re-registration and short-term patent systems, but differs in that each OGP application is substantively examined by patent examiners in Hong Kong before grant. While no OGP patent has been granted yet, it is believed that the OGP system may be quicker than the re-registration system, as it is not necessary to wait for grant of a UK, European or Chinese patent before obtaining enforceable rights in Hong Kong. Meanwhile compared to a short-term patent, which has a maximum term of just 8 years, the OGP provides a longer term of protection of up to 20 years and affords greater legal certainty as it undergoes substantive examination before grant. Therefore, OGP represents a big step forward, similar to other major jurisdictions which grant patents after substantive examination.

The IPD recently announced that it has received over 240 OGP applications since the inception of the system last year. As patent applications are usually only published 18 months after the first filing, and the OGP system is only 11 months old, it was expected there would be little information about these applications. However, 79 of the OGP applications have already been published and a request for substantive examination (usually due at 3 years from the earliest filing date) has been submitted on 70 OGP applications. This suggests that the new system is off to a fast start and that many applicants are requesting early publication and examination in order to obtain quicker protection. Further analysis shows that approximately 73% of the published applications have been filed by Chinese or overseas applicants, while 78% claim priority from an earlier patent application filed outside of Hong Kong.

The OGP system was originally conceived as a way of allowing Hong Kong companies to obtain a longer term of protection in Hong Kong, without first having to go to the expense of filing a patent application in mainland China, UK or Europe. While this is certainly a major use of the OGP, the filing statistics suggest that the OGP system has a broader appeal and is also of interest to overseas companies with a particular interest in the Hong Kong market. The most cost-efficient route for applicants interested in both the Chinese mainland and Hong Kong markets is to re-register a mainland Chinese (or UK or European) patent application in Hong Kong. However, the OGP is an alternative, which may be useful for companies that are not interested in filing in mainland China, UK or Europe.

If you have any questions or concerns regarding the above, please contact us at ip@deacons.com.


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