24 Feb 2020
Reforms to the Hong Kong patent system are set to transform the intellectual property (IP) industry as we enter a new decade. Alex Lau, Partner at Hong Kong Intellectual Property Advisory Service (HKIPAS), knows the ins and outs of the IP market intimately, having worked in the industry for more than 20 years. He is also an accredited mediator of the Hong Kong Mediation Accreditation Association Limited (HKMAAL), and believes these two roles complement each other as he expects more IP infringement cases to be handled through mediation in the future. Here, he outlines the impact of reforms to the patent system.
What have been some of the biggest changes within the IP industry of late?
The introduction of the reform of Hong Kong’s patent system came in December 2019. Before, applications for existing [types of] patents – namely standard and short-term patents – were only subject to formal examination by the Patents Registry. Under the new patent system, standard patent applications filed are subject to substantive examination by the Patent Registry.
Some refinements have also been made to short-term patents. For example, each application may contain up to two independent claims instead of only one in each application. The introduction of the new system will facilitate the alignment of practices of Hong Kong patent laws with those of international ones, and bolster Hong Kong’s development into a regional innovation and technology hub.
How does HKIPAS help businesses navigate the IP market?
Besides assisting businesses in their application for worldwide IP rights, we offer IP consulting services [on matters] including IP planning, IP management, infringement and litigation. On top of that, we provide IP advisory services in cooperation with different industrial and commercial associations and chambers in Hong Kong such as the Hong Kong Trade Development Council and the Trade and Industry Department, and hold IP seminars and training courses.
What is unique about Hong Kong’s approach to IP compared to neighbouring markets?
With the help of a well-established, comprehensive legal system, Hong Kong has become an international dispute resolution centre in recent years. This has made the city a better international business mediation centre than neighbouring regions and countries.
Your firm is closely linked to IP institutions in Mainland China and Hong Kong, and other commercial trade organisations. How do you help bridge the gap between operations in these jurisdictions?
To enrich the understanding of the IP rights of both Mainland Chinese and Hong Kong companies, we pay frequent visits to industrial associations and related local government departments in the mainland and Hong Kong and jointly organise seminars so that exchanges and collaborations are facilitated.
What advice would you give to businesses looking to address IP issues?
Businesses should consider IP rights an integral part of their business, just like product design and production, sales promotion and product development.
What are some of the biggest changes you have noticed within the IP market over the last few years in the mainland and Hong Kong?
In the past five years, rapid changes have been introduced to the IP law in Mainland China, and the protection of IP rights has also been improved greatly through amendments made to the IP law. In recent years, the mainland has stepped up efforts to protect IP rights via amendments to trademark and patent laws.
With the amendment of the Hong Kong Patent Law introduced last year…Hong Kong patents have entered into a new era, as Hong Kong can now examine and grant patents on its own instead of having to go through conversion steps.
What are some of the biggest challenges the IP market is facing?
The handling of IP infringement cases, and enabling businesses to have a better understanding of IP. We handle these two challenges by educating businesses so they have a better understanding of IP rights and the economic role they play, and the correct way to handle infringement cases.
What regulatory updates should Hong Kong companies be aware of?
Besides paying attention to mainland regulatory updates, Hong Kong [companies] also need to be fully aware of related aspects in other countries, such as investment preferences, IP laws, and dispute resolution.
Which emerging IP trends do you expect to come to the forefront in the next decade?
In the next 10 years, IP will become a technology trade and transfer issue in international trade. As a result, there will be a tremendous number of IP disputes. I think IP mediation is expected to become the most effective way in resolving issues of international technology and transfer disputes. In view of this, HKIPAS has already added mediation elements to IP seminars and training courses.
What is your role as a recognised HKMAAL mediator?
Besides arbitration and litigation, mediation offers an alternative resolution mechanism. As a qualified mediator, I offer individuals and businesses an effective and efficient way to sort out their differences. Our roles during mediation meetings are to be impartial and encourage the parties involved to fully understand the issues being addressed and find a suitable dispute resolution.