Anyone who dockets Hong Kong standard patents like European patents will get the dates wrong. Hong Kong charges two different kinds of annual fee: a maintenance fee for certain pending applications and a renewal fee for granted patents. Neither is simply due on each anniversary of the filing date from the third year onwards. Above all, the grant itself resets the clock: after grant, there are no fees at all for about three years.
This article explains when each fee falls due, how the two differ, and how the dates work out in three typical cases.
Two Routes to a Standard Patent
A Hong Kong standard patent can be obtained in two ways, and the fee rules depend on which one is used.
- Standard patent (R) – re-registration: The patent is based on a “designated patent application” at the CNIPA, the EPO (for a European patent designating the United Kingdom) or the UK Intellectual Property Office. Stage 1 is the request to record, filed within 6 months after publication of the designated application. Stage 2 is the request for registration and grant, filed within 6 months after grant of the designated patent (IPD: FAQ Standard patent (R)). The term is 20 years from the filing date of the designated application.
- Standard patent (O) – original grant: Since December 19, 2019, an application can be filed directly in Hong Kong and is examined by the Intellectual Property Department (IPD) itself. The term is 20 years from the Hong Kong filing date (IPD: FAQ Standard patent (O)).
Maintenance Fees: Only for Pending (R) Applications
A maintenance fee keeps a pending standard patent (R) application alive. It is paid with Form P9. According to the IPD, it is due “before the expiry of the fifth or any succeeding year” from the anniversary of the filing date of the designated application “first occurring after the date of publication of the request to record” (IPD: Maintenance and Renewal). After that, it is due on every anniversary until the patent is granted. If it is not paid, the application is deemed withdrawn.
The anchor date is therefore not the Hong Kong filing date and not the publication date, but the filing date of the Chinese, European or British application. The five years only start to run at the first anniversary after the request to record has been published. In practice, maintenance fees arise only when the designated application is still pending about seven to eight years after its filing date, for example after a long European examination or a Chinese re-examination.
Applications for a standard patent (O) do not require maintenance fees, however long examination takes.
Renewal Fees: Only for Granted Patents
A renewal fee keeps a granted standard patent, (R) or (O), in force. It is paid with Form P10. According to the IPD, the first renewal fee is due on “the fourth anniversary of the date of filing” “following the date of grant” (IPD: Maintenance and Renewal). This means the fourth anniversary of the filing date that falls after the grant, not the fourth anniversary after filing. For a standard patent (R), the filing date of the designated application counts; for a standard patent (O), the Hong Kong filing date. After that, the renewal fee is due on every anniversary until the 20-year term ends.
The consequence is a fee-free period of roughly three years after grant: the first three anniversaries after grant cost nothing.
Rules Common to Both Fees
- Earliest payment: up to 3 months before the due date.
- Grace period: 6 months after the due date, with a late fee.
- Non-business days: a time limit that expires on a day that is not a business day is extended to the next business day.
The official fees are modest (IPD: Forms and Fees):
| Fee | Form | Amount (HK$) | Late fee in the grace period (HK$) |
|---|---|---|---|
| Maintenance fee, each year after the 5th year | P9 | 270 | 95 |
| Renewal fee, 4th to 10th year of the term | P10 | 450 | 270 |
| Renewal fee, 11th to 15th year of the term | P10 | 620 | 270 |
| Renewal fee, 16th to 20th year of the term | P10 | 850 | 270 |
The Difference at a Glance
| Maintenance fee | Renewal fee | |
|---|---|---|
| Keeps alive | A pending standard patent (R) application | A granted standard patent (R) or (O) |
| Anchor date | Filing date of the designated application | (R): filing date of the designated application; (O): Hong Kong filing date |
| First due | End of the 5th year from the first anniversary after publication of the request to record | 4th anniversary of the filing date after grant |
| Then | Every anniversary until grant | Every anniversary until the end of the 20-year term |
| If not paid | Application deemed withdrawn | Patent ceases to have effect |
Three Examples
Example 1: Standard patent (R) based on a long-pending Chinese application. The Chinese application was filed on March 10, 2020 and published in September 2021. The request to record was published in Hong Kong on May 20, 2022. The Chinese patent is granted in January 2029, the Hong Kong patent on June 12, 2029.
| Date | Event | Fee |
|---|---|---|
| March 10, 2023 | First anniversary of the Chinese filing date after publication of the request to record | None; the five years start here |
| March 10, 2028 | Expiry of the 5th year; application still pending | First maintenance fee (payable from December 10, 2027; grace period until September 10, 2028) |
| March 10, 2029 | Application still pending | Second maintenance fee |
| June 12, 2029 | Grant of the Hong Kong patent | Maintenance fees end |
| March 10, 2030 to March 10, 2032 | First to third anniversary after grant | None |
| March 10, 2033 | Fourth anniversary after grant | First renewal fee, then every year until 10 March 2040 |
Example 2: Standard patent (R) based on a European application with normal pendency. The European application was filed on September 5, 2019 and granted in October 2022. The Hong Kong patent was granted on April 20, 2023. The first maintenance fee would only have been due on September 5, 2027 (five years after September 5, 2022, the first anniversary after publication of the request to record in October 2021). Because the patent was granted earlier, no maintenance fee is payable. The anniversaries in 2023, 2024 and 2025 are free. The first renewal fee falls due on 5 September 2026, payable from June 5, 2026, with a grace period until March 5, 2027.
Example 3: Standard patent (O). The application was filed in Hong Kong on February 3, 2021 and granted on August 18, 2024. No fees were payable during the three and a half years of examination. The anniversaries in 2025, 2026 and 2027 are free as well. The first renewal fee falls due on February 3, 2028, payable from November 3, 2027, with a grace period until August 3, 2028.
