Hong Kong Institute of Patent Attorneys

Hong Kong Institute of Patent Attorneys Ltd
Established 2009
Type Professional Organization
President Dr. Lewis Luk
Location Hong Kong

Hong Kong Institute of Patent Attorneys (HKIPA) (Chinese: 香港專利師協會) was formed immediately after the Chief Executive of Hong Kong SAR has announced the six advantageous industries in his Policy Address 2009-2010, namely Innovation and Technology, Testing and Certification, Creative and Cultural Industries, Environmental Industries, Medical Services and Education Services.

Members of HKIPA mainly consists of intellectual property or patent lawyers and foreign patent attorneys. HKIPA carries out the functions of training and certification for its members. Qualified members are being designated as "Registered Patent Attorneys (HK)" for lawyers, "Registered Patent Agents (HK)" for non-lawyers and "Registered Patent Engineers" for engineers. The training and examination programme is being conducted in co-operation with the Faculty of Science, University of Warwick, UK, the Vocational Training Council, Hong Kong and the Hong Kong Productivity Council.

Since 2009, the HKIPA has been lobbying the Hong Kong SAR Government to reform the current patent system and the regulation of patent practitioners.[1] The proposal was being discussed in the Legislative Council of Hong Kong SAR.[2] On October 4, 2011, the Hong Kong SAR Government has published a Consultation Paper on the Review of the Patent System in Hong Kong.[3] On 10 November 2011, the HKIPA has entered into a MOU with the Netherlands Institute of Patent Attorneys.[4] On 7 February 2013, the Government of Hong Kong SAR has published a Report of the Advisory Committee on Review of the Patent System in Hong Kong. Some of the key recommendations includes an "Original Grant" patent system should be established in Hong Kong with substantive examination outsourced to other patent offices and a full-fledged regulatory regime on patent agency services (which involves regulating both the provision of services and the use of professional titles) should be set as the ultimate goal in the long run, which has to be achieved in stages, with possible interim measures.

Objectives[5]

1) To provide education, professional, vocational and technical training and development to the people in Hong Kong and Mainland China on subjects relating to intellectual properties and their dispute resolutions;

2) To enhance the professional standard of the patent practitioners in Hong Kong through education and certification programs such as the Registered Patent Attorneys (HK), Registered Patent Agents (HK) and Registered Patent Engineers ;

3) To conduct research and collect the views of the patent practitioners and the business sector on intellectual property related matters;

4) To advise the government on the public policies and legislations which affect the development of intellectual properties in Hong Kong;

5) To promote Hong Kong as an innovation and technology hub in Asia;

6) To promote Hong Kong as an international financial centre for innovation and technology companies;

7) To support the setting up of a standard patent substantive examination system in Hong Kong;

8) To support the regulation of the patent practitioners in Hong Kong.

The Executive Council (2014-2016)[6]

President: Dr. Lewis Luk, JP, Solicitor, Industrial Engineer, Domain Name Panelist

Vice President: Benny Kong, Solicitor

Vice President: Dr. Kam Wah Law, JD, PhD, Solicitor, US Patent Attorney

Vice President: Simon Tang, Solicitor, General Mediator

Secretary General: Carol Li, MSc, Licensed PRC Patent Attorney & Patent Litigator

Council Member: Ping Yuen Chu, BSc, LLM, ex Head of IP Centre, Federation of Hong Kong Industries

Council Member: Charles Ho, MS, JD, US Patent Attorney, PRC Patent Attorney

Council Member: Alice Kwan, LLM, ex Senior IP Examiner of IP Department of Hong Kong

Council Member: Lam Sum, BSc, Juris Master, Licensed PRC Patent Attorney & Patent Litigator; First Hong Kong-educated Chinese Patent Attorney (2004); Qualified Chinese Lawyer

Council Member: Nigel Lee, MSc, LLM, PRC Patent Attorney, UK Chartered Patent Attorney

Council Member: Nelson Liu, LLM, Solicitor, General Mediator

Council Member: Dr. Toby Mak, PhD, PRC Patent Attorney

Council Member: David Tsai, Solicitor

Council Member: Duncan Tse, Solicitor, Microsoft Certified Professional

Council Member: Edmond Yeung, Solicitor

Council Member: Liz Yip, LLM, PRC Patent Attorney

Training and Examination Programme

The training and examination programme of HKIPA consists of ten papers:[7]

Level 1: Certificate in IP Law and Practice (“CIPL”)

Module 1: International Patent Law and Practice;

Module 2: Hong Kong Patent Law and Practice;

Module 3: Hong Kong Design and Copyright Law; and

Module 4: Hong Kong Trade Mark Law and Practice.

Level 2: Postgraduate Award in International Technology Management (“PGA”)

Module 5: International Patent Fundamentals;

Module 6: Fundamentals of Patent Drafting; and

Module 7: Product Design and Development Management.

Level 3: Postgraduate Diploma in Patent Practice and Engineering ("PGD")

Modules 5, 6 and 7 of PGA plus

Module 8: Patent Filing and Preliminary Examination;

Module 9: Patentability and Substantive Examination; and

Module 10: Analysis of Patent Infringement and Validity.

Membership scheme

a) Student Members (non-voting)

- Students of universities, community colleges, institutes of vocational education (IVE) and other institutions of higher education

b) Associate Members (non-voting)

- Holders of either Group A (Law) or Group B (Engineering/ Science/ Technology) qualifications; or

- Registered Patent Engineers - Engineers or Scientists (as defined in Group B below) + PGA

Group A (Law) qualifications

- Hong Kong Solicitor; or

- Hong Kong Barrister; or

- Foreign Lawyer; or

- LLB; or

- Juris Doctor; or

- PCLL; or

- LLM in IP Law; or

- LLM with substantial contents in IP Law; or

- JSD/ PhD in IP Law; or

- Such other qualifications comparable with the above as approved by the Executive Council of HKIPA.

Group B (Engineering/ Science/ Technology) qualifications

- Full Member, Hong Kong Institution of Engineers; or

- Senior Member, Institute of Industrial Engineers (Hong Kong); or

- Full Member, Institution of Engineering and Technology, UK; or

- Master of Science or Engineering; or

- Doctor of Engineering / Doctor of Philosophy in Engineering or Science or Technology; or

- Such other qualifications comparable with the above as approved by the Executive Council of HKIPA.

c) Full Member (voting member)

1) Founding Members

- Senior Intellectual Property Solicitors; or

- Senior Intellectual Property Barristers; or

- Senior Foreign Patent Attorneys as recognized by the Executive Council.

Note:

a) All Founding Members must be admitted on or before a certain date as designated by the Executive Council of HKIPA;

b) Founding Members cannot describe themselves as Registered Patent Attorneys (HK) or Registered Patent Agents (HK) until they have completed the education and training programs and satisfied the other requirements as set out below.

2) Registered Foreign Patent Attorneys (HK)

“Registered Foreign Patent Attorneys (HK)” means PRC Patent Attorneys, US Patent Attorneys, UK Chartered Patent Attorneys, European Patent Attorneys or such other foreign patent attorneys with comparable qualifications as recognized by the Executive Council of the HKIPA. All Registered Foreign Patent Attorneys (HK) under the HKIPA are required to describe their qualifications with a clear reference to their home jurisdictions.

3) Registered Patent Attorneys (HK)

a) Hong Kong Solicitor + PGD or Master of Science or Engineering or (PGA for Founding Members)

b) Hong Kong Barrister + PGD or Master of Science or Engineering or (PGA for Founding Members)

4) Registered Patent Agents (HK)

a) Registered Foreign Patent Attorneys (HK) as recognized by the Executive Council of the HKIPA + Certificate in IP Law

b) Holder of Group A qualification + PGD or (Master of Science or Engineering) or (PGA for Founding Member); or

c) Holder of Group B qualification + (CIPL + PGD) or (CIPL + PGA for Founding Member); or

d) Registered Patent Engineer + CIPL + PGD.

5) Fellows

a) Registered Patent Attorneys (HK) + Master of Science by Faculty of Science, University of Warwick, UK

b) Registered Patent Agents (HK) with Group A qualification + Master of Science by Faculty of Science, University of Warwick, UK

c) Registered Patent Agents (HK) with Group B qualification + LLM in IP Law as approved by the Executive Council of HKIPA;

PLUS five years post-qualifying experience as Registered Patent Attorneys (HK) or Registered Patent Agents (HK).

6) Honorary Members (with no voting rights)

- Honorary Life Presidents

- Honorary Presidents

- Honorary Members

- Advisors to Committees

- Honorary Advisors

- Honorary Fellows

Other requirements for certification

Board Assessment

All Registered Patent Attorneys (HK) or Registered Patent Agents (HK) must pass a Board Assessment in front of a panel of three Registered Patent Attorneys (HK) or Registered Patent Agents (HK) or Executive Council Members of HKIPA.

Practical Training

All Registered Patent Attorneys (HK) or Registered Patent Agents (HK) must complete a 12 months practical training under the supervision of a Registered Patent Attorney (HK) or Registered Patent Agent (HK) or Executive Council Member of HKIPA.

For senior patent practitioners, the training period can be substituted by a 12 months mentorship program as prescribed by the Executive Council Member of HKIPA.

Code of Professional Conduct

All Registered Patent Attorneys (HK) or Registered Patent Agents (HK), Registered Foreign Patent Attorneys (HK) are required to comply with the Code of Professional Conduct of HKIPA as set by the Executive Council of the HKIPA. The current version of the Code of Professional Conduct is based on the European Patent Attorneys model.

They are also required to complete a Continuous Professional Development (“CPD”) course on Code of Professional Conduct within the first 12 months of their first certification. They can however choose to complete the Code of Professional Conduct course before or during their 12 months practical training or mentorship period and the CPD points can be carried forward to their first year of certification.

Continuous Professional Development

All Registered Patent Attorneys (HK) or Registered Patent Agents (HK), Registered Foreign Patent Attorneys (HK) are required to complete a minimum of 15 CPD hours each year (from 1 November to 31 October) on Patents, Intellectual Properties, Technology, Law, Code of Professional Conduct, Risk Management Education and other related courses as approved by the Executive Council.

See also

References

  1. ↑ "Regina Ip, Member of the Legislative Council - Reform of Intellectual Property Rights protection in Hong Kong". Reginaip.hk. 2011-02-28. Retrieved 2011-10-23.
  2. ↑ "Panel on Commerce and Industry (Agenda) 15 March 2011". Legco.gov.hk. Retrieved 2011-10-23.
  3. ↑ "香港特別行政區政府知識產權署 Intellectual Property Department". Ipd.gov.hk. Retrieved 2011-10-23.
  4. ↑ http://www.hkipa.org.hk
  5. ↑ "HKIPA". HKIPA. Retrieved 2011-10-23.
  6. ↑ "HKIPA". HKIPA. Retrieved 2011-10-23.
  7. ↑ "HKIPA". HKIPA. Retrieved 2011-10-23.