First thoughts on Hong Kong’s new patent system; second thoughts on its further medical use claims

Although Hong Kong is one of the most competitive economies in the world, it does not have an independent patent system. This Special Administrative Region has been re-registering patents that were granted by China, the EPO and UK under the Patent Ordinance of 1997. It did not sit well for Hong Kong that, in regard to the dependence of its patent system, it was in the same league as jurisdictions such as Cambodia, Fiji and Seychelles. While the Copyright (Amendment) Bill 2014 noisily failed in April 2016, the Patent (Amendment) Bill 2015 was passed in complete silence, last June. The bill, which will probably come into effect in 2017, will give birth to an independent patent. Next to this ‘Original Grant Patent’ (OGP), one can still re-register Standard Patents that were substantively examined and granted by the State Intellectual Property Office (SIPO) of China, the EPO and UKIPO. However, since Hong Kong does not yet have the know-how needed to do substantive examinations, it pro-actively signed an agreement with SIPO in 2013 to train and support them until they can do these activities by themselves. The continuance of reregistration next to an independent patent will create a challenge to uphold a unified standard of quality. When Hong Kong registrars are able independently to conduct substantive examinations, one could imagine, in this time of regionalization and unifying patent systems, that China, the EPO or UK would also recognise Hong Kong’s patents by providing the possibility to re-register its patents after just a formal examination. The Patent (Amendment) Bill 2015 will also increase the standard for the Short Term Patent. Short Term Patent owners need to ask the Registrar for substantive examination after grant, or face revocation. In the same vein, under the new ordinance, these patentees can only sue a third party for infringement if they have requested substantive examination or already have a certificate of substantive examination. Hong Kong will allow for first and further medical use claims. The legal fiction of non-susceptibility of industrial application for a diagnostic, therapeutic or surgical treatment under Hong Kong’s patent ordinance is resolved if the claim is phrased as a purpose-limited product claim. Also, the ordinance resolves the problem that the known substance is not novel if it concerns a first but also further medical use. One can argue that allowing first medical use is a balanced policy decision: between protecting purpose-limited claims and accessibility to generics. However, with second and further medical use, the scales are tipped towards protection of extending originators’ patent rights, despite a lack of novelty and marginal inventiveness. This might not be conducive for generics and the access to reasonably priced medicines. Then again it might be positive for efficacy studies.