Established in December 1969, the Asian Patent Attorneys Association (APAA) now has over 2300 members from 18 Recognised Groups in over 24 jurisdictions. As a nongovernmental organization dedicated to promoting and enhancing IP protection in the Asian region, with a long history of over 40 years since its establishment, the Association has continuously played a crucial role in the development of the patent service industry of the region. 2012 witnessed a milestone change for the Association. The president appointment system, which had lasted since inception, was replaced by a fair and transparent open election. After the process of candidate nomination, campaign, and open election, Mr. C. K. Kwong, was elected as the 10th President of APAA, being also the first person from Hong Kong to serve in this prestigious position. Mr. Kwong has “multiple identities,” besides the President of the Association, he is the senior partner of a law firm; he is also a Justice of the Peace (JP) because of his great contributions to HK’s IP development; he is a member of the HK Jockey Club, who goes to the races to see the performance of his horse when he has spare time. A China IP journalist got the chance to have a face-to-face talk with Mr. Kwong to learn more about APAA and his “multiple identities.”
China IP: As the earliest established nongovernmental organization on patents in the Asian region, APAA has attracted over 2300 members through 40 years of development, who can be a member of the Association?
Mr. Kwong: APAA members are divided by jurisdictions rather than by country or nationality. For example, though HK, Macao, and Taiwan are all part of China, they belong to different Recognized Groups since they are in different jurisdictions. There are 18 Recognized Groups, namely, Australia, Bangladesh, Hong Kong, India, Indonesia, Japan, Korea, Macau, Malaysia, Myanmar, New Zealand, Pakistan, Philippines, Singapore, Sri Lanka, Taiwan, Thailand, and Vietnam. APAA members comprise of individual members practicing the patent attorney profession in the Asian region as well as organizations that are constituted in the region which are operated by one or more of such individuals. APAA holds a Council Meeting every year and a General Assembly once every three years at various locations within the Asian region. With the increasing recognition of the importance of IP, more people attend APAA’s Council Meetings. The last meeting was held in Hanoi, Vietnam in 2013 which attracted over 1600 participants (both members and observers) from over 70 countries. Recognized Groups have built close relationships with local IP authorities and they also have great influence on the development of IP laws and regulations in their respective jurisdictions. When IP laws and regulations need to be amended, the local IP authorities always seek the opinions of the Recognized Groups in the specific jurisdiction.
China IP: With the “one Country, two systems” policy which has been applied since 1997 when HK returned to China, are there any influence on the patent system due to the policy?
Mr. Kwong: There are two types of patents in HK: standard patents and short-term patents. A standard patent cannot be directly applied for in HK, but needs first to have an invention patent application filed in or extended to China, Europe or UK, and then within 6 months from the first publication of the base application, the applicant can file a request to record in HK. In addition, the applicant must also file a request for a grant within 6 months of the publication of the grant of the parent patent. The longest period of protection for a standard patent is 20 years, starting from the filing date of the parent patent application.
A short-term patent protection system was set up in 1997. Applicants can directly file an application in HK once the specification, claims, and drawings are ready. A search report from a PCT International Searching Authority will need to be filed in support. HK examiners only perform an examination on formality and do not concern themselves with any substantive examination on novelty and inventive step. Almost all short-term patent applications can successfully mature into a grant and certificate issued at around 3 months after the submission of all the needed documents. The maximum term of protection for a short-term patent is 8 years (subject to renewal for the 2nd four years before the expiry of the 1st four years). The short-term patent protection system with simplified and fast registration procedure is designed to fit HK’s industry characteristics. The life cycle of most products produced in HK is short; hence, the product comprised in the patents needs to be protected immediately.
China IP: How does an applicant choose the place to file a patent application since there are three choices: the Chinese mainland, Europe or UK?
Mr. Kwong: It depends on where the applicant is based, and moreover the technology involved taken into consideration. Normally the applicant would choose Europe or UK to file an application due to language factor if it is an overseas company. Chinese companies normally apply for patents in Mainland China and reregister it in HK. For HK local companies, they are more inclined to apply for shortterm patents in HK since they can get protection in only a few months. However, if the applicant wishes to claim priority from an application filed in a Paris Convention country or World Trade Organization member country, territory, or area, the shortterm patent application should be filed in HK within 12 months after the date of filing the first application.
China IP: What are the different requirements for being a patent agent in HK and the Chinese mainland? As a senior IP practitioner, could you give some advice to the people who are going to be a patent agent?
Mr. Kwong: The patent agent profession in HK is different from that in Mainland China. In the Mainland China, to become a patent agent one has to pass the patent agent examination first. But there is no such examination in HK. The APAA HK Group recognizes HK IP practioners who are qualified to practise by certain professional examinations and the majority of them have lawyer qualifications. Historically, HK law firms have practised as agents for trademarks and patents.
To be a qualified patent agent, one needs to spend a lot of time and energy to pass the patent agent exam or lawyer qualification exam. Writing good patent documents is fundamental to being a good patent agent. One also needs to master patent laws and related commercial laws that can help him advice clients on commercialization of the patent, for example through licensing and joint venture. Moreover, there is one more ability which is the most important and difficult to obtain — good communication ability. Since the patent itself and patent laws are rather complicated, an agent’s advice is only useful when he can use simple expressions to explain complicated concepts to his clients, so that they can understand easily to make the right decision.
China IP: As far as I know, there was a fundamental change in the presidential appointment for the Association. You are the very first president that came from the open election in the Association’s over 40 years of history. Could you tell us about the election?
Mr. Kwong: Yes. Actually there were no open elections for the position of the President since APAA’s foundation until 2012. It was a common practice for the incumbent president to appoint his or her successor. This appointment mode was good for the development of the Association during its initial stages. However the expansion of the Association and the growing number of members called for a more democratic way of choosing its President who should be responsible for its members rather than the former president. We made the decision for an open election in 2012. An election committee, comprising of 5 senior members of our Association, was set up to plan, arrange, and supervise the whole election. The election followed the procedure of candidates nomination, official acceptance of nomination, candidates campaign, then finally council members assembling in one hall to vote by secret ballot (the number of council member is determined by the number of members in the Recognized Groups). There were two candidates, one Australian and I. Both of us visited local Recognized Groups to do the lobbying. I travelled to 11 countries to meet with Councilors and won the support of the majority from all jurisdictions to be elected as President with a convincing margin of 40% votes more than the other candidate.
China IP: When did you become the Justice of the Peace (JP)?
Mr. Kwong: I remember the day clearly, it was on July 1st 2008. The JP title is given as a recognition and encouragement by the Government of the Hong Kong Special Administrative Region for the people who have made outstanding contributions to society. It is a great honor for me to become a JP. I have been devoted to HK’s IP development and actively involved in IP law reform. Perhaps my contributions caught the attention of the Intellectual Property Department of HK, which recommended me to be a JP.
China IP: As a partner in a law firm, the workload should be heavy, and also as the President of APAA now, you must be even busier. How do you keep work-life balance?
Mr. Kwong: I would try to prioritize and Q China IP: allocate time reasonably. Being a small place, HK has the advantage of being compact and one place is never too far away from the other. It only takes me 10-15 minutes to travel from home to office, which saves plenty of time in commuting. I always believe that while we live a hustle and bustle life of a modern society, we have to spend time with our families. And this is what I insist, having dinner with my family rather than engaging in social activities outside. I normally spend one or two days a week to handle APAA affairs. Sunday is family day, no work but a day with my wife and children. I do exercise and stretches regularly to keep fit.