Patent Agent in Hong Kong

4 June 1989 Tiananmen Square

2009-06-03T19:06:00.004+08:00

It has been 20 years.

Let us have a moment for those who were killed, hurt, and deprived of human rights since then. There are activists still kept in prison because of what happened 20 years ago.

There are many ways to show we are concerned. Here is one of them:
My Square is Tiananmen Square - Solidarity photo action

The Chinese government also shows their concern by shutting down web access to a lot of sites in the past few days, including twitter. People in Southern China also cannot watch Hong Kong TV that they used to watch in the past.

Chinese Bidder on Yves St. Laurent Auction Refuses to Pay $40 Million

2009-03-03T08:30:00.003+08:00

I think that caught a lot of attention lately, in particular, the Chinese guy who succeed in bidding the Chinese Bronze Rat Head and Rabbit Head last week at Christie's.

This 'winner' hold a press conference on 2 Mar 2009, proudly saying that he will not pay, and the other spokesperson in the press conference said (in Chinese) "The world has learnt a lesson".

I think we learnt that lesson long time ago and this press conference just reinforce our learning:
We demand money on account for all Chinese customers, no matter they are new or recurring customers. In particular, when it is time for filing of application that we need to pay for government fee, we felt as urgent as the client. That is, if they don't pay us money on account, we will not pay on their behalf for any government fee.

We do understanding inventors / companies do have cash flow problem from time to time, but holding a press conference and say that out loud (and proudly) "... what I want to stress is that I will not pay" is a little bit too much.

See the related news here: http://abcnews.go.com/International/Business/story?id=6987633&page=1

Meeting fellow professional in Facebook

2009-02-26T16:04:00.002+08:00

From time to time, I have questions such as trademark registration in Indonesia and Italy. Apart from Google, I am also using facebook to look for fellow professional and groups in other countries. I found that very useful.

Peace in Gaza

2009-01-06T14:39:00.001+08:00

In the year of 2009, we wish peace in Gaza and concern about types of weapons used by the invading army.

Blooming business

2008-11-17T07:21:00.001+08:00

It seems that the patent business is not affected by the current economic downturn. At lest two of our customers have increased their global patent filing in the past two to three months. I understand that they are preparing for roll out of new product that is cheaper to manufacture; and these improvement include lower the cost to make, transport (reduce weight) and maintain. To make all these patent protection, it also means that their competitors cannot use such new method to produce lower cost product.

I am back with a new hosting service

2008-08-11T23:32:00.002+08:00

Hi,
I was busy, then I am lazy, then problem with hosting service. Now I am back. Hopefully I can write / blog more.

How to become a patent attorney in Hong Kong

2008-06-29T19:45:00.000+08:00

From Day One, this is a personal view blog, so I share my personal experience.

First, I need to say a few words about not writing for a long long time. When you are busy, you stop for a few weeks, then it extends to a few months. I wanted to pick up again, then I forgot the password. Now that is a push with two comments. So I am back.

There is no such thing as patent attorney in Hong Kong. As there is no independent patent examination in Hong Kong, there is no need for this profession.

Typically a lawyer may take this up as one of the area of practice. There is no formal requirement who can and connot take up patent work.

There is a Asia Patent Attorney Association - Hong Kong Group. Being a member is as close as being a patent attorney in Hong Kong. To become a member, you need a few years experience in patent drafting and execution, and referral from a few members.

Without a membership, if you know what you are doing, and have trust from your clients, and do produce good result, then you can call yourself whatever you like. This is a unregulated profession.

Sent via my phone...

New administrative regulation for patent application

2007-09-08T18:03:00.000+08:00

The State Intellectual Property Office of PRC (SIPO) issued a administrative regulation on 27 Aug which will become effective on 1 Oct 2007. As of today, I cannot find the English version on the official web. This is the highlight, with the original numbering:

=====================
....
2. Applicant or Patent Agent should not involved in abnormal patent application;

3. Abnormal patent application includes:
3.1 Same person or legal entity has submitted multiple patent applications with similar contents; or caused to submit multiple patent applications with similar contents.
3.2 Same person or legal entity has submitted multiple patent applications that copy prior arts; or cause to submit multiple patent applications that copy prior arts.
3.2 Patent agent that submit patent applications as described in 3.1 and 3.2.

4. SIPO may take action against abnormal patent application according to patent law and regulations, and may take additional action....
============

The Chinese version of this can be found here.

So what happen to incremental improvement to existing technology? On the good side, it protect existing technology, but on the other hand, it discourage small but useful invention. This may be working in line with the recent patent changes in US. However, the new regulation may have a damaging effect on the raise of annual growth of patent application in China, currently running at a rate of 20%+ per year. But like other regulation in China, we cannot only read the words, we really need to wait and see how SIPO exercise the right of this regulation.

Service for inventors in China

2007-08-08T23:47:00.000+08:00

Hi, after so many months, I am back. I was planning for expansion of our service offering, so we dont want to limit ourself to handle patent applications in China, Hong Kong, United States and Europe. Let's talk about that later.

While we are brain storming and soul searching, we looked at what type of services are being offered for inventors in China and found something interesting. Here is the first one, with the web site called patent-cn.com, this is a site that post descriptions and most likely pictures, so in case you dont read Chinese, you can still enjoy some good looking pictures.

You may wonder that good looking pictures may not be able to reflect a new technology break through. Yes, that is right, as you may know more than 80% of patent applied in China are design patent, so a picture or two will give you good description of the patent.

Is it a mouse (Micky Mouse), no, it is a cat!

2007-05-21T17:21:00.001+08:00

Now it is a well publized news that a state run amusement park in Beijing has all sorts of characters not own by the park, like all Disney characters, Hello Kitty, Dora Amon, etc, running around in the park as an attraction. It was reported that the park was operating in this way for more than one year. The banner at the gate said, 'Disneyland is too far away, King Shan Park is close to you.' When confronted by a Japanese reporter, the park manager said that 'that is not Micky Mouse, as a matter of fact, it is a cat with big ears...' More could be seen at here.

This is not a new trick, about 2400 years ago in China, a senior offical wanted to know who were on his side, brought a deer in front of the king and said it was a good horse, some of the officals kept silence while the others said that it was a deer, not a horse. King did not know who to trust, eventually more and more said it was a horse. Then the testing offical knew who were his party members and used them to fool the King.

History is repeating 2400 years later. You think it is a mouse or a cat, check it out again!

Verdict is out - BT is illegal in Hong Kong

2007-05-18T14:21:00.001+08:00

The verdict for the first BT case is out from the Court of Final Appeal, the Chan who used seeds to upload three copyright movies was found guilty and the three months sentence starts immediately. Chan went through the Magistrates Court, Appeal Court and the Court of Final Appeal is Chan's last chance for his case to be heart. It was reported that Chan admitted the act of uploading copyright material in the first caution statement after Customs and Excise Department raided his home. The later hearing was mostly related whether Chan's act was really an act to 'distribute' 'material' to the public.

Since the arrest, there is no other publicized arrest of the same nature in Hong Kong.

Visit China Import and Export trade fair

2007-04-30T09:41:00.000+08:00

This session I am very busy with various business and personal matter, so have to do the visit on Sunday.

I visited the show because two of our clients asked us to do, to check out if there is any infringing products. I spotted one potential infringement and decided to purchase the product for further analysis. We will have our associated company in China to handle that later.

After doing what I have to do, I also want to see other types of goods, fishing if you like. I saw at least 5 counts of possible infringement, two are design patents, one utility patent. These can be good job to work for their IP owner. As I am not a lawyer in Hong Kong, I have more freedom to cold call custmers!

The Guangzhou Trade Fair

2007-04-26T09:01:00.001+08:00

Each year in April and October, there are Guangzhou Trade Fair. It started in 1957 and was the only channel for export from China. Over the fifty years, the trade fair only allow export companies in China to show in the trade fair, and foreign buyers as visitor. Average Chinese citizens are not allowed to entered into the show. Starting this year, the 101st Guangzhou Trade Fair, oversea sellers are allowed to display their products for importing into China, so it becomes an import and export trade fair and rename itself as China Import and Export Fair. Because of the large number of products it carries, it has two separated sessions. The first session ended in 20 Apr and the second session is still in progress.

According to State Intellectual Property Office of PRC, there were 203 case of complaints for infringement of intellectual property in the first session, which represents a 15% decrease over last year. The official news (in Chinese) can be found here.

I have a customer who carries products displayed in second session, and I will go to Guangzhou to see the exhibition and check out if there are any infringing products. The second session ends on 30 Apr, next Monday. Then it will be the long holiday in China for the 1 May labour day.

Amendment of patent bill in Hong Kong

2007-04-24T18:37:00.000+08:00

The Hong Kong Government is in the process to update the patent bill to implement a protocol adopted by the World Trade Organisation related to the issues related to import and payment of license fee for generic patented drugs, this is in particular addressing public health problems.

Speech by government officials on the subject can be found in a speech made on April 18.

State of intellectual property protection in China

2007-04-01T15:58:00.001+08:00

I attended a confeeence today. I think the best quote is "別人的免費拿來，自已的一毛不拔。", translated into "Others' property is free, as for mine, don't even think about it." by Social Brain Foundtion, a foundation in China. This is to describe the state of intellectual property protection in China. What a good statement!

Starbucks in Beijing Palace Museum

2007-03-14T11:35:00.002+08:00

People Congress is in session in Beijing. Two bills related to IPR would be discussed, one of them being the new Patent Law, the other, will be Private Property Law.

On top of that, recent Chinese media also gives quite some air time/coverage on the issue related to a small coffee shop in Palace Museum (also known as Forbidden City). Starbucks has been operating a small outlet in Palace Museum for more than 6 years, in a house that was used to be a common room for king's consultants, which was equivalent to meeting room for the senior ministries.

In recent months, a lot of people, and now including members of People Congress, want to kick Starbucks out of Palace Museum immediately, regardless of any commercial contract between the tenant and landlord. These opinions said that it pose danger to China's national culture. One of the report of the news can be seen here.

I have visited Palace Museum more than 6 years ago. Without Starbucks, I think that will be modern version of shops selling icy cold soft drinks, vendors selling ice cream (yes I bought ice cream in Palace Museum in my last visit, and I believe it is a European brand), vendors selling cheap replicate of old artificate. I dont know whether they will ban foreign brands such as American soft drinks or European ice cream in order to protect China's national culture after they successfully kick Star?

Aggressive patenting in China.

2007-03-01T12:46:00.000+08:00

Chinese New Year holidays came and gone. Busy as hell.

I was doing some search as a background search on an invention patent. I am working on a leisure product which is not common in China until in the past 2 or 3 years, so I don't expected a lot of patent in this area from domestic inventor.

I was wrong.

I found there were quite a large number of Invention or Utility Modle Patent from domestic inventors / applicants, with filing date in or around 2003. Now it is four years after these patents were published but not granted. I also noticed that these patents represent design of a part of the product. I can say that it would be a challenge to get granted, given our knowledge of this product our clients and their competitors make.

Is this aggressive patenting or even patent squattering?

So regardless of whether you sell to China now, if you or your competitor manufacture in China, do get IP protection in China.

Patent Application Grant - Success Rate

2007-02-19T13:56:00.000+08:00

I was working before the holiday to update our 'sales material'. I have checked the government information related to the HK Government Patent Application Grant, here is some highlight:

The grant was commissioned in 1997 and started the acceptance of application on Apr 1, 1998, since then, an average of 172 applications per year were received, up to Mar 31, 2006, a total of 1374 applications were received. Out of which 546 applications were approved. The status of the Grant as of 2006 is here.

We are lucky to get involved with some of these lucky applicants and our success rate to get the grant is higher than average. Needless to say, it would be helpful to get professional help to fill up forms and prepare documents about the invention.

Chinese New Year

2007-02-17T17:12:00.000+08:00

Chinese New Year starts on Feb 18 Sunday. Hong Kong office starts its holiday from 17 and we are supposed to have early break yesterday. However I have a very late meeting yesterday and lasted for more than 3 hours. Crazy ideas were discussed and we have to start some serious work after holiday. China uses week long holiday to promote domestic spending, so I cannot get hold of my agent friend in China before Feb 26.

I can use some time to do some writing.

Applications from China enter in PCT

2007-02-15T11:53:00.000+08:00

I was browsing the web, checking for news. Just read from SIPO of PRC that in 2006, China is the 8th in term of applications for entering into PCT from China. The actual number was 3910, which is an increase of 56.8% over 2005.

I have been telling our clients to make use of PCT to extend the time for them to consider whether to apply patent in other countries, and China provides a cheaper alternative when doing local and PCT application. This is good that China provides such a major increase and create more business for patent attorneys in China.

Utility Model in China

2007-02-10T14:26:00.001+08:00

You learn new things everyday. Recently I came across more than one person talking about Utility Model in China. In the recent years, for domestic Chinese who apply for patent, number of applications for Utility Model was more than Invention in the year 2006. However, for foreign applicants, more than 85% of applications were for Invention.

In case you dont know, there are three types of patent in China: Invention, Utility Model and Design.

The one I just learnt in the past week: When filing for Invention Patent, we can also file the Utility Model. Firstly, law will not allow you to own two patent for the same invention, so technically, when the Invention Patent is granted, say, 3 years after application, then you have to withdraw the Utility Model patent. Then why you want to do it?

Say two applications were filed at the same time for the same invention in 1st February 2007. The Utility Model patent will be granted in one year time, say 1st February 2008. With that patent certificate, you can go out protecting your patent right. Three years later (starting from today), the Invention patent is granted in 1st February 2010. You throw away the Utility Model patent certificate, and start using the Invention patent certificate to protect your right. So you buy two years of protection by the Utility Model.

What is the cost? Quite small as compare to other things. Cost of drafting is zero for Utility Model as you file the same copy as the Invention. Filing fee including service charge is small compared to Invention patent.

Bloom of IP business in China

2007-02-08T20:30:00.000+08:00

Our firm have quite some works in January, including a few deadlines towards end of January. We got some forms filled and search report answered, some applications filed.

Then we have 5 new inventions in a 2 hours meeting with the client. So I started looking for one more agent firm in Shenzhen. In 2002 there were less than 10 patent attorney firms in Shenzhen, now there are more than 30. Some of the new one are actually started in recent years or months, and they are hunger for business. This is good for pricing but may be bad for quality. I heard that some drafting work were not done professionally and there were a lot of requisition later on, and now the effect is becaming serious, as these new firms have been operating for more than 1 year now.

However most of the raise in patent applications are utility model for domestic applicants.

HKSAR Intellectual Property Department Open Day

2007-02-04T18:48:00.000+08:00

The Hong Kong Intellectual Property Department is going to have an Open Day on 9 Feb this week, however, I only knew this from one of an association as a member. In the official web site of IPD, this event was not listed.... Well, that seems a good invitation to this event.

Web site of the Intellectual Property Department of HKSAR

2007-01-29T16:05:00.000+08:00

Please check that out on the official web site:
http://www.ipd.gov.hk

So I will give you my non-official view on the HK Patent later.

Definition of Patents in Hong Kong

2007-01-29T13:38:00.000+08:00

I have been very busy in January. Not that I have finished my work now, I just do this during lunch for an reply to one of the reader. Will tell that works in January later.

A reader asked about what is the definition of Patents in Hong Kong. I am not adding value to cite you the law, as law are easily accessed via the web.

Hong Kong was under British ruling for more than 150 years, so law and regulation related to intellectual property protection pretty much follows British system and that has not been changed since China took over, excepted for some operational aspects.

Now the fine print: legally Hong Kong has an independent legal system, meaning patent needs registered in Hong Kong before it got protection. For example, if a patent is registered in China, it won't get automatic protection in Hong Kong.

Then what is the patents application system? There is no examination system but only a registration system. The Hong Kong Intellectual Property Department doesn't have a group of engineers and attorneys to examine patent applications. They rely on the respective 'central government' patent office(s), this is not a political correct statement but will give you the idea. Before 1997, legal owner of a patent can apply for registration in Hong Kong if the same have been granted in U.K. Since 1 July 1997, legal owner of a patent can apply for registration in Hong Kong if the same have been granted in China, U.K. OR the European Patent Office (designating U.K.).

I want to add that there are two types of patent in Hong Kong and there is a time schedule when to file registration.

More questions before you read this? Guess so, let me put some more Hong Kong patent related issues in future blog.