Patent Litigation in Practice Series: Spotlight on Hong Kong: Navigating Hong Kong patent rights in a worldwide context

The latest issue of our monthly series comes from Hong Kong, where we look at its distinctive patent systems and the strategic importance of foreign proceedings.

Hong Kong’s patent system recognises both “re-registered” protections based on certain foreign patents and patents granted through local examination. The Patents Ordinance (Cap. 514) (PO) serves as a self-contained code governing patent protection (i.e., registration, enforcement and revocation) within Hong Kong’s own legal processes. 

Due to the “re-registered” rights system, foreign proceedings can significantly influence local strategies in patent disputes, creating a unique legal arena where parties must balance local procedural rules with global considerations.  

Hong Kong Patent System

Under the PO, there are two types of patents available in Hong Kong: 

1. Standard Patent
   1. Standard Patent (R): Obtained via the “re-registration” route based on a “corresponding designated patent” filed with a designated patent office outside Hong Kong (i.e., the UK Intellectual Property Office (UKIPO), the European Patent Office (EPO), in respect of a European patent designating the UK, or the China National Intellectual Property Administration (CNIPA)).
   2. Standard Patent (O): Obtained via the “original grant” route by filing a direct application in Hong Kong.
       
2. Short-term Patent 
   1. Provides a shorter term of protection; typically suitable for simpler inventions or those requiring a faster grant process. 

Since the introduction of the original grant route in December 2019, applicants can obtain a standard patent (O) entirely under Hong Kong law and examination.  The table below sets out the recent government statistics of patents in force since Hong Kong granted the first ever standard patent (O):[1]

Despite the steady rise of granted standard patents (O), standard patent (R) filings continue to dominate the number of patent applications in Hong Kong. What happens in overseas proceedings therefore remains influential on the patent landscape in Hong Kong. 

Practical Effect of Overseas Proceedings

Hong Kong’s patent regime operates independently from other jurisdictions, with its own legislation, court rules, and procedures. Regardless of what happens to a patent abroad, a patent proprietor (or alleged infringer) must nevertheless bring (or defend) any action in the Hong Kong courts. In practice, however, a standard patent (R) remains closely linked to its foreign “parent” patent (i.e., the corresponding designated patent).

Below are three key points to note when considering how foreign patent proceedings might affect your Hong Kong patent rights:

1. Revocation and Validity
   
   Revocation proceedings of a corresponding designated patent will impact on the validity of a standard patent (R). Section 91 of the PO sets out the legal grounds on which a patent can be challenged. A patent (standard or short-term) can be revoked in several types of proceedings, including infringement and standalone revocation actions.
   
   For a standard patent (R) based on a European patent (UK), revocation of that designated patent in a post-grant opposition under the European Patent Convention can serve as valid grounds to revoke the standard patent (R) in Hong Kong, subject to proof and procedural requirements.

2. Post-grant Amendments

An application for post-grant amendment for a standard patent (R) is generally made to the court. If a standard patent (R) is based on a European patent (UK), and that European patent is amended after a post-grant opposition at the EPO, the patentee must file a verified copy of the amended specification with the Hong Kong Registrar of Patents (Registrar). Once recorded by the Registrar, the standard patent (R) is deemed amended in the same way. 

3. Influence of Foreign Rulings on Hong Kong Litigation

Whilst foreign rulings do not automatically bind Hong Kong courts, they often shape the parties’ arguments, scope of claims and even the likelihood of commercial settlement. If a foreign counterpart to a Hong Kong patent is narrowed by a court or patent office overseas, the proprietor will often pursue a corresponding amendment in Hong Kong to avoid vulnerability to validity challenges.

In this regard, Hong Kong courts follow the English courts’ general approach to case management and the criteria for allowing amendment applications. A patentee seeking to enforce its patent should apply for a matching amendment promptly. If there are pending court proceedings where the validity of the Hong Kong patent is put in issue, making the application early in the proceedings can enable efficient case management by avoiding duplication of evidence and the necessity to “educate” the court twice in the art. If the patentee delays their application to amendment, this may be one of the factors considered by the court in determining whether to dismiss the application.  

Conclusion

Litigating a standard patent (R) in Hong Kong highlights the interplay between local autonomy in patent enforcement and the practical influence of foreign proceedings. Even though the Hong Kong patent system is self-contained, overseas decisions (especially those involving revocation or claim amendment) may still carry significant weight. 

Consequently, litigants contemplating patent enforcement or facing infringement claims in Hong Kong must be prepared to navigate local procedural rules and the evolving global patent trends.

[1] https://data.gov.hk/en-data/dataset/hk-ipd-ipstat-number-registrations-grants-hong-kong