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The Power and Pitfalls of a shifting IP landscape in Hong Kong

15 Nov 2018

(This article provides a summary of an invited Q&A interview with DVC’s Benny Lo as it appeared in the September 2018 issue of Asia IP.)

In a recent Q&A interview published by Asia IP, Benny Lo provided a compass for the conversation on recent changes relating to IP protection and dispute resolution in Hong Kong.

Benny began by outlining two key composites that will impact the IP protection backbone over the next few years; namely the Patents (Amendment) Ordinance and the planned implementation of the Madrid Protocol.

When the Patents (Amendment) Ordinance comes into force some time next year, Benny explained, technology owners will have the additional option of protecting their inventions through original grant patents (OGP). This obviates the need for owners to first obtain a patent from Mainland China (SIPO, now known as CNIPA),  the UK, or the EPO (designating UK) before re-registering for a Hong Kong standard patent locally, which is what the current regime mandates. This means that owners will be able to file directly in Hong Kong independent of the three designated jurisdictions. Substantive examination and prosecution of the applications will also be conducted locally. The obvious advantages this brings include cost-effectiveness and expediency, as well as the speed at which some owners, particularly SMEs, can bring their inventions to market.

Turning to the Madrid Protocol, Benny elucidated on the main benefits that would be brought to the fore, once it takes effect in Hong Kong. Once implemented it will, in a nutshell confer reciprocity. In other words, trade mark applicants need only file a single international application in one of the contracting states and pay only one set of fees to benefit from international registration. At present, the Hong Kong Trade Mark Registry is jurisdiction specific so local businesses wishing to expand overseas will welcome this streamlined system and view it as a major advantage.

Shifting gears, Benny considered what Hong Kong is doing to support innovative, IP rich companies. To foster fund-raising and accelerate development in the biotech industries, biotech companies can now go public in Hong Kong under new rules enacted earlier this year. Those rules enable pre-revenue biotech companies to bypass the conventional requirements that relate to profits, cash flow and revenue etc to accelerate their listing. That said, to ensure proper the safeguards are in place, it will still maintain a level of transparency by mandating public disclosure of IP rights and patents applied for.

On the topic of arbitration of IP disputes, through recent amendments to the Arbitration Ordinance, Hong Kong has aligned itself with other forward-thinking jurisdictions by clarifying that all aspects of IP right disputes may be the subject of arbitration, and any such arbitral award shall be binding upon the immediate parties to the arbitration. In Benny’s view, this is a compelling and desirable inclusion as it facilitates the swift resolution of domestic and international disputes in Hong Kong as the city matures into an innovation and technological hub.

In the second half of the interview, Benny also shared some specific anecdotes with practical and actionable takeaways for IP dispute resolution from his deep bench of experience in international arbitration, both from the angle of counsel and arbitrator. In particular, he discussed the benefits of submitting tech-heavy disputes to arbitration even after a dispute has arisen, the importance of a well-drafted arbitration clause and the vital arbitral procedures from other areas of international arbitration which could be adopted in the IP arena to make IP dispute resolution in Hong Kong “Efficient, Expert-driven and Equitable”.

Benny’s interview with Asia IP in its entirety may be downloaded here.

Dr Benny Lo, a barrister and chartered arbitrator, is a member of DVC who focuses on civil and commercial, companies and intellectual property dispute resolution. He is active in court litigation and in international arbitrations and receives instructions to act as counsel and appointments to act as arbitrator. Before joining the legal profession, Benny had been engaged in pharmaceutical and biotechnology research, including serving as postdoctoral fellow of Nobel Laureate Sir Gregory Winter FRS researching into antibody and protein engineering technologies.