Preface

The patent invalidation system in Hong Kong adopts a pure judicial review model, completely led by the court without administrative invalidation procedures. Its operational logic is fundamentally different from the dual track judicial review system for administrative invalidation in mainland China. The following is an analysis from three aspects: institutional framework, core rules, and practical points:

1、 Institutional cornerstone: Judicial centrism

1. Legal Basis

Core regulations: Articles 91-103 of the Patent Regulations (Chapter 514)

Case law source: Following the English common law tradition (such as Windsurfing creative judgment standard)

2. Jurisdiction

Only entrance: Court of First Instance of the High Court of Hong Kong

Final appeal power: may appeal to the Court of Appeal (CA) and the Court of Final Appeal (CFA)

3. Patent type and invalidity association

Although the key difference standard patent is based on authorization from a designated office, Hong Kong courts have the authority to independently review its validity (see Teva v AstraZeneca [2017] HKCFI 571).

2、 Invalid startup: Two core paths

1. Infringement lawsuit counterclaim (mainstream path)

Trigger condition: After being accused of infringement, the defendant files a counterclaim within the defense period

Advantages: Can simultaneously resolve infringement and validity disputes, avoiding duplicate litigation

Burden of proof: The invalid requester bears the burden (proof standard: balance of possibility)

2. Non infringement declaration lawsuit

Applicable scenarios: Potential infringers actively clarify their rights status

Dual requirements: Simultaneously assert (1) that one's own actions do not infringe, and (2) that the patent is invalid

Risk: Losing the lawsuit may be deemed as infringement (considered as self acceptance of implementation)

3、 Invalid Reasons and Evidence Rules

1. Legal reasons (Article 91 of the Patent Regulations)

2. Special rules for evidence

Language cost: Non English evidence requires authentication, translation, and notarization (with an additional cost of 30% -50%)

Technical experts: Courts rely on expert witnesses from both parties (common fields: medicine/communication/machinery)

Discovery: Patent holders can be compelled to disclose research and development records

4、 Key links in the litigation process

Process time: 18-30 months (affected by the complexity of evidence)

5、 Cross border linkage mechanism

1. Arbitration Clause in the Greater Bay Area

According to the Arrangement on Mutual Assistance in the Preservation of Arbitration Procedures between Mainland and Hong Kong Special Administrative Region Courts, the Hong Kong arbitral tribunal may make a ruling on the validity of related patents in Mainland China, provided that:

The parties agree to choose Hong Kong arbitration

Invalid claims limited to utility models in mainland China/industrial design patent

2. Cross border mutual recognition of evidence

Mainland notarized documents can be directly used as evidence (according to the Arrangement on Mutual Entrustment of Evidence Extraction between Mainland and Hong Kong Special Administrative Region Courts in Civil and Commercial Cases).

The technical appraisal report (such as issued by the Retrieval Center of the Chinese Intellectual Property Office) can be adopted by the Hong Kong court.

6、 Enterprise response strategies

1. Path selection matrix

2. Evidence optimization techniques

Creative controversy: Combining the use of patent documents, technical standards, commercial documents (such as product manuals)

Language cost control: prioritize mining existing technologies in English/PCT

Expert witness: Select technical experts with Chinese patent examination experience (bonus point)

3. Risk prevention

Patent layout: Applying for standard patents for high-value technologies (although time-consuming, highly stable)

Free Implementation Survey (FTO): Early screening of short-term patents in Hong Kong (with an invalidation rate of 68%)

7、 Analysis of the advantages and disadvantages of the system

Advantage:

Rigorous judicial review (referencing the UK's century old patent law)

Strong cross-border enforcement power of arbitration awards (especially in the Greater Bay Area)

Disadvantages:

Lack of administrative procedures leads to difficulties in safeguarding the rights of small and medium-sized enterprises

Short term patent quality loopholes are prone to abuse

Practical advice:

Patent disputes related to Hong Kong should initiate validity evaluation as soon as possible, and prioritize reducing the total litigation cost by invalidating counterclaims; It is recommended to apply for Chinese same family patents simultaneously for core patents, forming a dual guarantee.