Patent Agent in Hong Kong

Google buys patents from IBM

2012-01-30T19:45:00.001+08:00

As far as I know, patents were meant to encourage innovation, but lately they are being used as a weapon.

Google has gained hundreds of patents from IBM as it continues its intellectual property spending spree. It has acquired 188 patents and 29 applications, adding to the 1,000 it purchased from IBM last summer.

The spokesman of Google expressed that acquisition those patents can enhance its patent portfolio and increase its competition in the market, even Android would not been threatened by anti-competitive of Microsoft, Apple and other companies easily.

If you desire your innovation to become stronger, prepare more weapons for it now!!

And here is the news: http://hk.news.yahoo.com/google買ibm專利-025003364.html

Copyright protection as the reason to stop pedestrians from taking pictures

2012-01-05T13:00:00.000+08:00

As a headline in a local Chinese newspaper (Apple Daily Hong Kong), Dolce & Gabbana stopped pedestrians from taking pictures of their shop in Canton Road, Kowloon and the explanation offered was 'copyright protection'. According to the newspaper, these pedestrians were walking in the sidewalk about 4 metres away from the shop, and whenever they pointed their camera towards the shop, they were stopped and the staff or the security guard blocked the view of the cameras.

The reporters of the newspaper had further tested out other shops selling luxury goods in the area and only Dolce & Gabbana really watched out for anyone with camera near their shop.

Local lawyers were quoted that display of a shop facing the street are subject to photographic snapshot by pedestrians in public area, such as the sidewalk of Canton Road.

Actually this is a very innovative way to use 'Copyright Protection' and 'Protection of Intellectual Property' to restrict the right of those walking in the sidewalk of a busy street in Hong Kong.

Consultation on Review of the Patent System in Hong Kong

2011-12-31T16:06:00.000+08:00

Today is the deadline to submit our opinion on the subject. Here is summary of our response:

1. We do not support the introduction of OGP system in Hong Kong.
2. We strongly support to keep the existing re-registration system. The re-registration system can be further improved by recognizing examination result of US PTO and EPO in addition to existing arrangement.
3. We support to cancel Short-term patents all together in Hong Kong.
4. We support mandatory substantive examination be required before any legal action taken by the short-term patent assignee, should the Short-term patents system is kept in Hong Kong.
5. We have a lot of concern to regulate patent agency service in Hong Kong, with the uncertainty on the outcome of the patent system review, including the introduction of OGP to Hong Kong. We support that no change should be made at this time.

This is the last day of 2011 and we wish everyone have a great year in 2012.

Regulation of Patent Agency Services in Hong Kong

2011-11-24T16:21:00.000+08:00

We have discussed a couple of time in the past about regulation of patent agent / patent attorney in Hong Kong. In short, there is no restriction on who can act as an agent for others or carry on the business as a patent agent.

Our firm has staff with legal and science qualification, but there is no specific examination or qualification requirement to provide patent agency service in Hong Kong. The current Review of the Patent System in Hong Kong also touches on this subject. However, it may be difficult to regulate as some firms, like ourself, do a lot of work to help customers to file patent (and trademark for that matter) applications outside Hong Kong. We rely on our associated patent attorney in France to handle our patent work for representation before European Patent Office. We instructed patent attorney in other countries for handle works in their respective countries. For this type of work, would it be regulated in Hong Kong in the future? We are closely monitoring the ongoing consultation on the subject.

Hong Kong Patent System: Substantive Examination

2011-11-19T18:00:00.000+08:00

As part of the review of the Patent System in Hong Kong, the examination system for standard patent is part of the system that is being consideration for revamp.

Currently, Hong Kong is using a 'Re-registration system'. Simply put, we don't have patent examiner to examine patent application. A patent that is granted by China or UK patent office can apply for registration in Hong Kong, provided certain procedural steps are followed. For UK patent office, that also applies for applications granted by European Patent Office with UK as one of the designated country.

One way to look at it, any one who have a granted patent in China or UK, the cost to get patent registered in Hong Kong is small. On the other hand, if an inventor intended to seek for protection in Hong Kong only, there was no quick and easy way, the inventor need to first file the same in China or UK. The route is longer and cost more as compared with getting it examined in Hong Kong. And this is the reason why there were suggestion to revamp this system.

As we have pointed out in an earlier blog, there were only 13,000 patent applications per year in Hong Kong. With that size, to keep a broad of examiners to handle various types of patent applications may not be economical. So the consultation paper further suggest to outsource the substantive examination to other examination authority. So it defeats the purpose of training people with the necessary skill to handle patent in Hong Kong.

As an alternative, the current 're-registration system' will go hand-in-hand with 'original grant system', and that will call for different fee structures for different routes. That is, for anyone who seeks for protection outside Hong Kong, and require protection in Hong Kong, would favor the re-registration system so as to save cost. In the unlikely event that an invention that worth only protection in Hong Kong would go for original grant system. Of course, in a case that requires protection in Hong Kong and countries other than China and UK, that may not favor either system. We doubt the popularity as such case, as China and Europe would be major trade partners of Hong Kong.

Further when we look at Europe, they have instituted one examination system, the European Patent Office, as a money saving route to get patent protection in multiple countries. We are of the view that original grant system in Hong Kong is moving in the wrong direction for reducing cost of doing business on a global platform.

It is our view that we don't see the urgency to introduce original grant system and we strongly urge to keep the current re-registration system, so that we still have a choice.

New layout and non-working RSS

2011-11-18T01:51:00.001+08:00

We have problem with the RSS, which is not working for awhile, so we were trying to fix it and not successful. While we were trying to fix it, we have changed the layout a bit. Hope you like it.

Short-term patent system in Hong Kong

2011-11-16T15:42:00.003+08:00

There is one question in the Review of the Patent System in Hong Kong:
(c) Whether the short-term patent system should be retained as a supplement to standard patents?

Our answer is no. We agree that the short-term patent system be abolished.

Let's look at some background: there are two types of patent in Hong Kong: Standard Patent and Short-term Patent. In short, a Standard Patent is granted in Hong Kong if the same application was granted in either China or UK, assuming certain procedural steps are followed. That is, Hong Kong recognize the granting of patent in UK or China as the necessary requirement in Hong Kong, and there is no examination board here to handle patent application.

In order to get a short-term patent, applicant needs to provide a search report by recognized patent searching authority, further, a short-term patent is limited to one claim per application, with a protection term limited to 8 years (as compared with 20 years for standard patent).

The short-term patent does provide a faster and less costly route to obtain patent protection in Hong Kong. However, as the procedure is different from a standard patent and may lead to abuse. It only encourage inventors with less resources to take this route, however, because of it's limitation, some of these short-terms patent may not be enforceable. In Hong Kong court, normally a short-term patent certificate is not sufficient to prove that novelty and inventiveness of the invention.

We suggest that short-term patent may invite inventor of less resources to seek for IP protection via patent application, but the novelty of such invention is in doubt.

Further, we should look at the current number, in the consultation paper prepared by Hong Kong SAR Government, it shows that in the year 2006-2010, the total number of Standard Patent Applications per year is 13,790, 13,766, 13,662, 11,857 and 11,702 respectively. For Short-term Patent Applications, the number is 520, 599, 488, 551 and 614 respectively. We are talking about less than 5% of the total applications are Short-term Patent.

The discontinuation of short-term patent system would, in theory, reduce the number of applications by 5% max.

The issue is whether such system may encourage inventors to invest more R&D work in Hong Kong, creating inventive works to compete in the global market, etc. Our answer is, we don't know, and we don't know by keeping this system, we will encourage more R&D being done in Hong Kong.

If we are to keep short-term patent, we are of the position that we should not lower criteria for patent granting. It only further invite abuse. We should also consider the requirement that substantive examination should be required before infringement action can be taken (as suggested in 2.11 of the consultation paper).

Number of patent applications per year in Hong Kong

2011-11-15T10:26:00.001+08:00

Hong Kong is reviewing its patent system and information disclosed are interesting. In the past 5 years, there were about 13,000 per year. The number actually declines in year 2009 and 2010. Does it reflect the local R&D are reduced in the economic downturn? Luckily we are not affected.

May be because of hard work by Hong Kong Productivity Council, we believe that the number of patent application grant is in the upward trend lately.

A folk innovator of China

2011-11-14T12:38:00.003+08:00

Maybe most of us would imagine that only a large corporation could afford to invest in an innovation. Nevertheless, a folk innovator of China displays that our concept is wrong.

He Zengrong, a folk innovator of China, who has paid patent maintenance fee for 9 years, has been granted on five applications since 1998, including two invention patent. As an innovator of enthusiasms, Mr. He brings his own innovations to take part in every ‘’Patent Supermarket’’ in Wuhan(武漢) each month to consult with investors there.

Mr. He believes his invention---Electric mosquito coils terminator. When his daughter had produced a baby in hospital, he had used his Electric mosquito coils to drive the mosquito. He expressed that only using his own Electricmosquito coils could make him to feel at ease. At present, Mr. He’s Electric mosquito coils can bring 20,000 RMB a month for him and he will put that money as capital on his innovation.

"The certification of patent is the proof of success for each innovator." Mr. He said. Without a certification of patent, the corporation might turn down to collaborate because of the high risk and the low market acceptance. In an other word, having a certification of patent can increase an opportunity to cooperate with corporation.

Finally, Mr. He claimed all innovators would also have a common wish that using their innovations contribute to the society. Mr. He, a folk innovator of China told us that enthusiasm and persistence were the most essential elements for innovation. Mr. He is so successful and was single out in a Chinese report by the SIPO.

Hong Kong as Asia's IP Trading Platform

2011-10-26T11:48:00.003+08:00

Hong Kong Trade Development Council (HKTDC) and Hong Kong Design Centre (HKDC) organize a one day conference with the title "Hong Kong as Asia's IP Trading Platform" on 2 December 2011. Details of the function can be found here. We have not much involvement in the past in terms of IP trading. We have not made up our mind whether to join or not.

Cost is HKD400 per head including Keynote Luncheon, so it is not expensive by all standard.

Posting from the restaurant

2011-10-23T11:24:00.001+08:00

Just try out on the iPod touch version of blogger to post this blog. And I am also reading some recently published patents applied by Apple. So better laptop are coming soon enough.

McDonald's blocks the yellow ‘’W’’ on red!!

2011-10-20T07:51:00.002+08:00

"You use 'M' as your company trade mark so that I would be banned to use 'W'? Your 'M' trade mark represents a door, whereas our 'W' represents a container. There is no relationship with McDonald's," a spokesman of 'WONDERFUL萬德福' said.

'WONDERFUL萬德福' is a company involved in producing different kinds of foods and related services in China, uses a yellow 'W' on red as its trade mark. In 2003, WONDERFUL's trademark registration was objected by McDonald’s. The outcome was that WONDERFUL was revoked with the registration in the restaurant category.

However, McDonald’s does not satisfy the result and further pursue for the removal of the 'W' mark completely.

The legal process is now being handled in Beijing's court. http://hk.news.yahoo.com/紅底黃字w商標-麥當勞要封殺-213301877.html

Translation of Chinese patent applications into English

2011-10-15T23:22:00.006+08:00

Demand for translation works has been increased in the past 12-months.

In the standard process for our clients who file their first patent application in China and followed by filing the same in US and EPO, we translate from Chinese to English for any redrafting work done by patent attorney in US or Europe. This is an obvious choice for those inventor / applicant who can approve Chinese language.

Our US clients have their patent applications first filed in US need translation from English to Chinese for further redraft before filing to China SIPO.

In the past year, we also have requests from foreign attorney to translate Chinese patent application into English for possible litigation process in US or China, and this type of demand is increasing.

One client believed that his competitor have a patent granted in China that actually copied some of the key features of his products. In order to start the legal process to invalidate the Chinese patent, the first step was to perform evaluation and a formal translation of the Chinese patent was performed by us and the client's US attorney reviewed the Chinese patent. After that we have also translated a few US patents into Chinese for the legal process in China to invalidate the competitor's China patent. The legal process in China is now in progress.

With change to PCT rule 34.1 on minimum documentation to include Chinese patent documents as prior arts becomes effective on 1 July 2012, we think that the demand for translation on patent application related to Chinese language would be increased. Our translators in Hong Kong and China would pick up more business in the near future.

A background analysis on the subject can be found in an April blog from The Patent Bric. The Chinese news posted on SIPO can be found here.

Unix and C creator Dennis Ritchie dies at 70

2011-10-14T17:57:00.002+08:00

In my previous life, before I head for patent applications, I was a programmer / system engineer / developer. Now, I would like to use one of my blog to thank someone who created C programming language. I have been using C for above 5 years in my professional life.

Related news in BBC, and Computer World (UK).

Samsung’s Patent War With Apple - at the last days of Steve Jobs

2011-10-06T13:36:00.002+08:00

Samsung is seeking an injunction to get the new iPhone 4S banned from sale in France and Italy. It claims that Apple has used 3G wireless technology, which Samsung invented, without paying for it.
Samsung said in a statement "Apple has continued to flagrantly violate our intellectual property rights and free ride on our technology, and we will steadfastly protect our intellectual property,".
A patent war between the companies has been booming!! This is particular painful for Apple when they lost their beloved founder.
News in Total Telecom.

An Unprecedented Era of Innovation

2011-09-26T22:22:00.005+08:00

Chief of China Intellectual Property Office pointed out that the world is entering into an unprecedented era of innovation-intensive and industrial revitalization. There are four characteristics of such era: technology update and conversion cycle are shortened, the amounts of technologies increase violently, the frontier technologies become more complex and the links between technology are close.

Furthermore, the Officer claimed the system of intellectual property, which is an essential and supportive tool for the development of innovation, should conform the era to satisfy the demand of market.

The news (in Chinese) can be found here.

China is going to focus on 10 Major Technologies!!!

2011-09-22T10:54:00.003+08:00

Recently, the patent analysis and early warning group of State Intellectual Property Office has emphasized that China is going to lock eyes on patent analysis and early warning via its internal meeting. China strives to break with the inherent ideas and makes new ideas actively. There is no doubt that such internal report plays a supportive role for the preset guidance and decision-making audience.

The patent analysis and early warning programs of State Intellectual Property Office will focus on the10 major technologies, including, LTE technology (4G), high-performance computer chip instruction system, smart grid technology, bio-breeding technology, high-performance rare earth functional materials, cloud computing data center cooling and energy saving technology, vehicle fuel cell technology, carbon-chemical technology, oil and gas exploration and development of geophysical exploration technology and environmental pollution detection.

The original posting dated 19 Sep 2011 can be found here (in Chinese).

Seminar on Patent infringement and litigation in July

2011-06-10T16:14:00.003+08:00

Just received a mail from China Law Society Training Centre that they are going to organize a seminar on Patent Infringement and Litigation, the seminar is to be held on 9-11 July 2011. The contents of the seminar is very attractive for me, though I do not have the qualification to appear in Chinese court, but it is good to know the law and the process. I have a couple of litigation cases that I am working back and fro with Chinese patent attorney and attorney of law to plan for some actions to be taken shortly.

The instructors of the seminar include 'expert' from the Beijing Courts and High Court. Cost of the seminar is reasonable, using Hong Kong standard, it is only RMB2000 (about USD300) plus hotel and expenses.

Too bad that I have to assist in a court case in Hong Kong starting from 4 July 2011. So I will not be able to attend this time and hopefully they will organize another one in Guangdong in the near future.

In case you are interested, and able to understand Chinese, here is information related to the seminar.

Jun 4 movement 22 years ago

2011-06-04T09:30:00.004+08:00

22 years ago, the call for democracy was met with tanks and guns. 22 years later, there are a few demonstrators still in jail and a large number of them denied the right to go back to China.

A moment of silence for those who lost their life 22 years ago, and the call for the release of Ai Wei Wei, Liu Xiao Bo and many others who are jailed or illegal detained throughout China.

Summer promotion by China Intellectual Property HK Limited

2011-06-02T21:37:00.003+08:00

Our company is running a promotion this summer. We charge a flat fee for filing patent of invention application to State Intellectual Property Office of China for US$3,000 per application (translation, drafting and examination fee excluded). This fee also include claiming of foreign priority and condition applies.

Our company is also giving away free iPad2 (32G Wifi) for any inventor or foreign patent agent who fill 3 patent applications through us by 30 Sep 2011. To qualify, you must confirm and approve the final draft of patent application suitable for filing to State Intellectual Property Office of China and pay up cost on account before 23 Sep 2011.

Note: The US$3,000 fee represents a standard application process and handle patent of invention only. The fee does not include translation of patent application in your language into Chinese, and possible redrafting of patent application suitable for filing in China, and cost of draftsman work on patent drawing. Examination fee is not paid at time of filing and is not included in the US$3,000 quoted fee. Applicant is required to provide foreign priority certificate and courier to our office.

Hong Kong Patent Attorney

2011-06-01T13:48:00.002+08:00

There are professionals in Hong Kong trying to push for certification of patent attorney / patent agent. That will be an important move for intellectual protection in Hong Kong.

File a patent in China and claim a Taiwan priority

2010-11-20T09:38:00.003+08:00

No matter what was said in the past, if you have first filed a patent in Taiwan (Republic of China), within 12-months' time, you want to file the same patent in China, you cannot claim the priority date of the Taiwan application.

Starting from 22 Nov 2010, you can do that (with a small but).

On 12 Sep 2010, China and Taiwan had agreed to accept and recoginize each other's priority certificate. So for a patent application first filed to Taiwan patent office on or after 12 Sep 2010, the same application can be filed to China patent office after 22 Nov 2010 and claim the priority date of the Taiwan application. When filling in the proper forms, it should state that the first filing office is "Taiwan Region", not Republic of China.

It is good to know that, though two patent offices required filing in Chinese, but in Taiwan, you need to file in Traditional Chinese, while in China, you need Simplified Chinese. And apart from character translation, the use of technical terms are different. Some type of redrafting is required between the two versions.

China prepare to put in more effort to protect IP rights of foreign enterprise

2010-11-08T12:53:00.003+08:00

In a news announcement made on 8th November 2010, Chinese authority reinstate it's effort to protect IP rights of foreign enterprises.

A meeting was held in Chongqing City (重庆) on 7th November 2010 on the subject matter. The head of State Intellectual Property Office said that 100 or more policy had been rolled out annually in the last 5 years.

It was felt that China has developed leading edge technology in some of the fields, including energy, high speed train and information technology, as a nation, China should have interest in protecting itself in the IP area.

I hope foreign enterprises really had felt the effect in the past 5 years and give hope in the coming years. However, it is still not an easy task to deal with local authority, including the court and custom office with issues related to IP, not to mention when you have to deal with local administrative officials if there is a factory making infringement goods.

The Chinese news announcement can be found here.

Chinese Nobel Prize winner

2010-10-08T22:44:00.003+08:00

Just want to let the world know, we have another Nobel Peace Prize winner of Chinese nationality.

The Nobel Peace Prize winner is now serving a 11-years jail term in a prison in North East China. He was charged for co-signing Chapter 2008, promoting human rights in China.

The gentleman is Dr Xiabo LIU. At time of writing, it is believed that Dr Liu is not aware of the prize announcement, Mrs Liu is scheduled to visit him tomorrow.

A common Chinese saying: Liu, go home and have dinner with your family.

Patent as a collateral

2010-10-07T16:18:00.002+08:00

Recently as part of the government policy to encourage invention and application of patent from Chinese inventors, banks in China started to use patent right as part of collateral for a commercial loan. As of September 2010, there are 24 banks and 16 guarantee companies in China accepted such property as collateral.

Currently, the total cumulative loan portfolio of the amount RMB25 billion (around USD3.7 billion) was borrowed in 2000 projects that involved at least one patent right as part of collateral, that is, around USD1.8 million per project. According to the report dated September 30, 2010, the new loans approved in the first eight months of this year tallied to 77 cases that involved 504 patent rights with a total of of RMB 4 billion (around USD 600 million).

However, the report did not disclose the average value of each patent right in each loan and what other assets were involved in the loan application process. So in the end, may be the the banks are still considering the hard asset that are used to pledge the loan, and then throw in any intellectual property just to please the government officials. The report also mentioned that the current policy of using patent right as loan collateral is still at it's pilot stage since December 2008 and we are not sure how aggressive banks and other financial institutions to take on the surge in patent application from Chinese inventors.