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At-a-glance: Intellectual Property Department 24/F & 25/F Wu Chung House, 213 Queen's Road East, Wanchai, Hong Kong Tel: +852 2961 6901 Fax: +852 2838 6315 (Patent and Design Registry), +852 2838 6082 / +852 2574 4345 (Trade marks Registry) Email:... [more]

The Intellectual Property Department (IPD) has been working hard to develop Hong Kong into a regional IP trading hub and knowledge-based economy. Several activities have taken place throughout the year to promote this. As a traditional location for international finance and trading Hong Kong is believed to have the existing infrastructure, in addition to a mature legal system that is necessary to implement a successful IP trading platform.

Secretary for Commerce & Economic Development Gregory So laid out the future roadmap for IP in Hong Kong. "IP commercialisation is very important to the further development of Hong Kong's knowledge-based economy. More and more people recognise the importance of IP strategy as a tool that helps fortify the continued well-being of our enterprises," he said.

"The HK Government is strengthening its support to the innovation and technology industries, as stated in the latest policy address, and will build more platforms for enhanced scientific research collaboration between the Mainland and Hong Kong pursuant to the great importance placed on innovation under the National 12th Five-Year Plan," says Yvonne Chua, partner of Wilkinson & Grist.

The Copyright (Amendment) Bill 2011 is under review by the Legislative Council. The controversial proposal has attracted negative sentiment, with many dubbing the bill Internet Article 23, a reference to a failed proposed security law that drew massive street protests in Hong Kong.

The controversy stems from the proposal to criminalise the act of creating derivative works that constitute copyright infringement. If the proposals are passed, the government has the power to take action against the infringer directly. Under current law, the copyright owner must file a complaint before the government can take action. However, many practitioners confidently say that the public's negative reactions are due to a misunderstanding of the proposals.

For example, there is a defence available under section 118(8D) of the Bill, where the defendant will not be liable if he was not aware he was engaging in copyright infringement by communicating the work in question. One prominent practitioner explains she does not expect the Bill to come into effect any time soon until public mentality is changed. She explains it is too politically sensitive to introduce any laws because many in the public are dissatisfied with the current government.

Another major development is patent examination reform, which has been discussed since 2011. This February, the IPD announced that it will be introducing an original grant system with substantive examination while retaining the current re-registration system. The change is the centrepiece to an ongoing discussion about how to make Hong Kong a "regional innovation and technology hub".

A consultation paper from 2011 explains the need to reform the patent regime. Three proposals were made: introducing an original grant patent system, introducing a substantive examination on patentability of an invention before or after grant, and creating an accreditation body to regulate the patent system.

On the one hand, there are practitioners who doubt the effectiveness of implementing these proposals. The Law Society is of the opinion that the current regime in HK is effective and should not warrant fundamental changes. In its consultation paper, the Law Society notes: "HK is a very small part of the global market; it is unlikely to attract many businessmen who wish to apply for an original Hong Kong patent alone."

On the other hand, there are practitioners who support the change. Managing director of Eagle IP Jacqueline Lui warns: "Such a move should not be seen as merely examining Hong Kong patent applications. With the introduction of the Patent Prosecution Highway (PPH) around the world, now is the best time for Hong Kong to develop her examining capability."

She continues: "One way to attain this capability is for HK examiners to be trained together with SIPO examiners and act as a 'satellite' office of SIPO, similar to what is being done in Suzhou and Guangzhou. In this way, science graduates in HK will have another bright career option."