Research at HKU - Research Services

Q1: What should I do if I have made an invention?
Q2: What should be stated in the specification?
Q3: Is a drawing necessary for patent application?
Q4: What inventions can be patented?
Q5: Can I conduct a patent search by myself?
Q6: Who will be the patentee (owner) of the patent/invention?
Q7: Will the inventor have any sharing in the income generated from his/her invention?
Q8: Can the invention be published/disclosed before filing of application?
Q9: What are the differences between provisional and regular patent application in U.S.?
Q10: Any restriction or condition for converting a U.S. provisional application into U.S. Regular Patent application?
Q11: What is a patent, and how does it differ from copyright and trademark?
Q12: What are the benefits of getting a patent?
Q13: Are there any samples of patent applications and specifications?
Q14: Will a registered patent expire?
Q15: What if part of the new product invented by me involves an already patented product developed by another inventor?
Q16: Who should be named as the inventor(s) in the patent application?
Q17: What is the usual/average cost per application?
Q18: In which countries should I file my patent application?
Q19: Is it necessary to place a patent notice on the invention?
Q20: Should I put a "patent pending" notice on the invention after the application has been filed but before the grant of the patent?

-------------------------------------------------------------------------------

Q1: What should I do if I have made an invention?
A1: You should disclose such invention to the Intellectual Property Office of the University ("IPO") as soon as possible by furnishing IPO with the following documents:

(a) signed and dated "Application Form for Filing Patent" and "Invention Disclosure Agreement" (in Excel or Word format) ;
(b) hard copy and diskette/CD of any associated manuscript and/or abstract, if available;
(c) copies of all reference cited, if available; and
(d) a specification, including at least one claim and a drawing, if necessary.

IPO may then, at its costs and expenses, instruct patent agent/attorney to file patent application in the relevant countries as suggested by the inventor. The University, however, has the sole and absolute discretion to determine whether or not to file a patent and/or to develop such invention.

Q2: What should be stated in the specification?

A2: First of all, the title of the invention. It should also contain the following: a description of the background to the invention, a summary of the invention, the advantages or improvement of the invention over prior art, a brief description of any required drawings, detailed description of the preferred embodiments containing a description of the invention in full, clear, concise and exact terms as to enable any person skilled in the art to make and use the invention; your claims; and an abstract of the disclosure.

Q3: Is a drawing necessary for patent application?

A3: It is not a must but in the majority of cases, a drawing is essential. Drawings do not have to be drawn to scale or include nonessential features of the invention.

Q4: What inventions can be patented?

A4: To be patentable, an invention must be (1) new/novel, (2) involve an inventive step; (3) be capable of industrial application; and (4) not fall within the excluded category of invention.

An invention is considered to be new if it does not already form part of the state-of-the-art, which is basically the amount of knowledge that is available to the public in the world at the time that the invention is made (applied for).

The invention involves an inventive step if the invention is not obvious to a person skilled in the art, having regard to all matter forming part of the state-of-the-art.

There must be a clearly noticeable difference between the state of art and the claimed invention. The step must be significant and effective to the invention.

(3) Industrial Application

The invention must be something that is capable of industrial application or relates to an industrial process.

(4) Excluded Category of Invention

Discoveries, scientific theories, mathematical models, means of performing a mental act, playing a game, doing business, presentation of information and computer programs.

Offensive, immoral or anti-social inventions; and any plant, animal or biological process

To be patentable in U.S., the invention must also fall into one of the following statutory classes of things:

(a) processes,
(b) compositions of matter,
(c) manufactures,
(d) machines, and
(e) new uses of any of the above.

Q5: Can I conduct a patent search by myself?

A5: Yes, you can visit the following websites for information about issued patents:

http://www.uspto.gov
http://www.delphion.com
http://www.european-patent-office.org
http://www.patent.gov.uk
http://www.patents.com

Q6: Who will be the patentee (owner) of the patent/invention?

A6: Inventions made by employees of the University in the course of their duties will be the property of the University. The inventor will be required to assign all his/her intellectual property rights in the invention to the University.

Q7. Will the inventor have any sharing in the income generated from his/her invention?

A7: As far as financial arrangement is concerned, the gross receipts arising from the exploitation process are the absolute property of the University, but in general terms and at the sole discretion of the University, 50% of the net proceeds will be paid to the corresponding inventor(s).

Q8: Can the invention be published/disclosed before filing of application?

A8: In the United States, inventors can file a patent application within one year of publication of the relevant invention.

However, most countries do not have the one-year grace period the U.S. has. Thus, the inventors must get an effective filing date in most countries (either by actual filing there or by filing in the U.S. and then filing a corresponding Convention application there within one year) before publication of the invention.

Your intellectual property right in relation to the patent is protected as long as the disclosure/publication is limited to the same subject matter described in the application.

Q9: What are the differences between provisional and regular patent application in U.S.?

A9: A provisional U.S. Patent application can be served as a place holder to establish a priority date. If the inventor does not have enough information to file a regular application but wishes to claim an earlier filing date, he/she can file a provisional application (which need not contain any claim) first. Then, the inventor can convert the application into a regular one within one year of the filing date of the provisional application. However, a provisional patent application cannot by itself result in a patent.

A provisional patent application does not provide any legal protection in the sense that you cannot go into a Court and file an infringement lawsuit against another party based on a provisional application. If a regular patent application is issued as a patent, then you can file a lawsuit against an infringer.

Q10: Are there any restrictions or conditions for converting a U.S. provisional application into U.S. Regular Patent application?

A10: A regular patent is only entitled to the filing date of the provisional application to the extent that the two applications disclose the same subject matter.

Q11: What is a patent, and how does it differ from copyright and
trademark?

A11: Patent protects technical innovation. A patent, like any other form of property or business asset, can be bought, sold, rented, hired or licensed. A patent is territorial in nature and gives the owner an exclusive right to exclude others from making, using or selling his/her invention in the countries where patent has been granted.

Copyright protects the product of human creativity and it is a right given to the owner of an original work. This right can subsist in literary works, musical works, dramatic works and artistic works. Copyright is an automatic right and unlike patents and trademarks, it is not necessary to register a copyright in Hong Kong in order to obtain legal protection.

A trade mark is a mark or logo used by businesses to identify the goods in which they trade or the services they provide in the course of business. To be registrable a trade mark must be:

(i) distinctive for the goods/services for which registration is sought, and
(ii) not deceptive, or contrary to law or morality, and
(iii) not identical or similar to any earlier marks for the same or similar goods/services.

Q12: What are the benefits of getting a patent?

A12: Patent is a form of property. The patentee can use a patent for different strategic purposes in the course of business activities (eg. it may be assigned or licensed in return for royalties/fees). The patent owner also has the right to take legal action against third parties (ie. infringers) who make, use, or sell the patented invention during the term of the patent without the consent of the owner.

Q13: Are there any samples of patent applications and specifications?

A13: Yes. One can visit http://www.delphion.com or http://www.uspto.gov where the abstracts, claims and descriptions of patents issued can be found.

Q14: Will a registered patent expire?

A14: Yes, a patent will expire and the term of a patent varies from country to country. In the United States, utility patents used to be granted for a period of 17 years. However, owing to the amendment of the U.S. legislation, utility and plant patents issued from applications filed after 7th June 1995 will expire 20 years from the filing date. The term for design patents is 14 years from the date of issue irrespective of the date of filing.

Q15: What if part of the new product invented by me involves an already patented product developed by another inventor?

A15: It is possible that a patent may be granted to your invention. However, due to the use of unexpired basic patent(s), you may not make, use, sell, offer for sale, or import the invention without obtaining the prior consent from the holder of that/those unexpired basic patent(s). Such consent will usually be granted by way of licensing.

Q16. Who should be named as the inventor(s) in the patent application?

A16: Those researchers who had a share in the ideas of the invention should be named as the inventors in the patent application and the patent, if successful, will be granted to them jointly.

Q17: What is the usual/average cost per application?

A17: For a straight-forward Provisional U.S. Patent filing, it costs about US$500.00 to about US$1,800.00, depending on the state of the invention disclosure and drawing figures. For a Non-Provisional U.S. Patent filing, the costs of preparing a regular utility patent application can range from about US$6,000 to about US$20,000.00, depending on the complexity of the invention.

These figures represent the legal fees associated with preparing the applications. In addition to these fees, you have to pay filing fees (and other statutory fees) depending on where the application is filed. For a US patent application, the cost of the provisional filing is about US$100.00 and the fee for the regular filing is about US$500.00. There are additional fees for recording an assignment, publishing the patent application and issuing certificate of the Patent.

Q18: In which countries should I file my patent application?

A18: As suggested by the author of Patent it yourself (6th Edition, Nolo Press), David Pressmen, before making a patent application in foreign countries, you should consider the following issues:-

(i) whether a significant market for products embodying the invention is very likely to exist;
(ii) whether a significant commercial production of your invention is very likely to occur; and
(iii) whether you have got a foreign licensee (someone who is paying you money for your invention and know-how).

Q19: Is it necessary to place a patent notice on the invention?

A19: The patentee will have difficulties in recovering monetary damages for infringement if no patent notice or marking has been placed on the invention and a patent notice should consist of the word "patent" (or "pat.") and the number of the patent.

Q20: Should I put a "patent pending" notice on the invention after the application has been filed but before the grant of the patent?

A20: You may mark the invention with the words "patent pending" or "patent applied for" in order to discourage other inventors from developing a similar invention or product but legal protection for your invention is awarded only when the patent has been granted. Please also note that the words "patent pending" cannot be used in conjunction with the filing of a provisional application.

-------------------------------------------------------------------------------
The materials shown in this website are provided for general information purposes only and should not be relied upon or be regarded as legal advice.