Hong Kong

11 Aug 2020
What is the current state of the law on the patentability of CIIs?

The patent law of Hong Kong follows closely the provisions of the European Patent Convention in respect of patentable subject matter. Business methods and computer programs “as such” are among the list of items that are excluded. Similar to the European position, this does not however exclude patentability of a claim containing a feature rendering the claim not merely a business method or computer program “as such.”

Due to a lack of case law precedent from the Hong Kong courts on the patentability of CIIs, the Patents Examination Guidelines issued by the HKIPD (HKIPD Guidelines), which draws extensively on the rich jurisprudence of the UK courts and EPO, is the most relevant reference for considering CII patents in Hong Kong.

According to the HKIPD Guidelines, a CII claim directing to a computer program having a technical contribution would be considered as more than a “computer program as such” and thus potentially patentable. This is in particular if the claimed contribution embodies a technical process lying outside the computer, requires new hardware or a new combination of hardware or results in the computer being made to operate in a new way.1 That said, the mere fact that a computer program reduces the load on the processor or makes economical use of the computer's memory does not amount to making a better computer, and thus does not take it outside the category of a computer program as such.2

While many business method inventions are implemented with a computer, the mere use of a general purpose computer in carrying out the claimed business method would not afford the claim patentability. There must be some technical contribution from the business method invention other than the faster or more efficient process brought about by a general purpose computer in order to qualify for patentability.3

Under the current patent system in Hong Kong, in addition to direct filing of a patent application, a re-registration patent can be obtained based solely on substantive examination by patent offices in China, UK or Europe (which of course applies the respective Chinese, UK or European patentability standards). Notwithstanding that, the Hong Kong re-registration of the granted patent is considered as a stand alone HK patent in itself. Hence, the patentability and validity of a Hong Kong re-registration patent, whether in respect of a CII or any other subject matter, would be determined by a Hong Kong court with reference to the requirements under Hong Kong law.

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Justin Davidson
+852 3405 2426

Stanley Ng
+852 3405 2337