As of 28 June 2024, the Hong Kong Intellectual Property Department (HK IPD) will issue electronic Certificates of Registrations instead of paper Certificates for trade mark, patent, design applications filed by registered e-filers.
The change will apply to the following applications:
- For trade mark applications published for acceptance on or after 15 March 2024;
- For patent applications published for grant on or after 28 June 2024; and
- For design applications published on or after 28 June 2024.
This is a welcome and long-awaited change which brings the HK IPD practice in line with the practice in many other IP offices.
What if I prefer a paper Certificate?
If registered e-filers prefer paper Certificates, a written request must be lodged before the following opt-out deadlines:
- For trade mark applications, within six (6) weeks from the date of notice of publication for acceptance;
- For patent applications, within two (2) weeks from the date of notice of publication for grant of the patent in question; and
- For design applications, within two (2) weeks from the date of notice of acceptance of the application in question.
To assist with the transition, for trade mark applications published for acceptance from 15 March 2024 to 31 May 2024, the HK IPD has asked that the request is made as soon as possible, and no later than the expiry of the three-month opposition period.
What if I was not a registered e-filer when I filed the HK application?
If you did not file the application as a registered e-filer, a paper Certificate of Registration will be issued. However, you may request to receive an electronic Certificate instead if you register as an e-filer and send the written request by the deadlines set out above.
DCC is a registered e-filer and our Hong Kong team is fully prepared for the changes and have updated its practices accordingly. DCC clients will be notified of these changes and the opt-out arrangements set out above, and DCC would be pleased to assist other applicants, including those that are not registered e-filers.
If you have any questions, or require any assistance in relation to your Hong Kong application, please do not hesitate to contact the Hong Kong team.
For more information and comments following the interview with our authors, please go to www.asiaiplaw.com