As Hong Kong seeks to excel as a knowledge-based economy, it has become increasingly important to develop a robust and comprehensive intellectual property (IP) regime.
David Wong, the director of Hong Kong’s Intellectual Property Department, is the man leading the way in that regard since he took over the reins in March 2019.
“I’m fascinated by IP law and how it drives economic and social development. I hope to combine my policy sense, administrative experience and legal education background in this capacity,” Wong told Hong Kong Lawyer.
But getting into this particular eld did not happen right away.
A Career in Civil Service
Wong’s journey began in 1990, when he joined the Administrative Service straight from the law school of the University of Hong Kong. Now a veteran civil servant having served in over ten Bureaux and Departments, he rose through the ranks to the deputy secretary level by 2013.
“I was attracted by government advertisements regarding the Administrative Service, because it’s portrayed as the linchpin of the government operation, and officers are tasked to formulate and implement policies and allocate resources. They required people with a broad outlook, analytical minds and those with a high sense of public service and integrity. All these made a lot of career sense to me,” recalled Wong.
The advertisements delivered. Wong’s postings on the economic side have covered the former Trade Department, the Innovation
and Technology Commission, the Commerce and Economic Development Bureau and the Financial Secretary’s Office.
It was his time at the Innovation and Technology Commission in particular that helped him understand the importance of having a solid IP ecosystem in place.
“Innovation is the fuel of the economy. Success is dependent on the commercialisation and monetisation of innovation and R&D outputs. This can be done through IP trading, such as assignments, licensing, franchising, joint-venture, spin-off and other forms of collaboration,” said Wong.
“As an IP system is integral to the economic development of a place, the Greater Bay Area Outline Development Plan supports Hong Kong as a regional IP trading centre leveraging on our advantages in IP protection and sophisticated professional services.”
He points to Hong Kong having its own trademark law in 1873, which was even earlier than the UK’s. It underlined the importance of such a system in a place of commerce, especially since the first trademark here was registered in 1874.
New Patent System and More
Wong described 2019 as a “year of harvest” and it’s easy to see why. December 19, 2019 marked the commencement of a new patent system, which he says was the result of “a sound foundation laid by years of hard work” from his colleagues and predecessors.
An advisory committee had been set up from 2011 to 2012 to study the evolution of the patent system, which included relevant and diverse membership from IP and legal professions, industry, R&D sector, academia, and public sector. The decision to introduce this new patent system was made in 2013, with amendments to the ordinance in 2016, before it finally launched in 2019.
The new patent system introduced an original grant patent (OGP) system for standard patents, refined the existing short-term patent system and introduced an interim regulatory measure prohibiting the use of certain confusing or misleading titles and descriptions relating to patent practices in Hong Kong.
“There were great efforts made to promote the launch of the new system, many seminars and outreach events. Our thanks go to Professor Dennis Lo, inventor of non-invasive prenatal testing, who is a staunch supporter and did a promotional video with us about it,” said Wong.
Wong’s goal now is to make the OGP system more user-friendly for patent registrations, part of the essential infrastructure to facilitate R&D operations, innovation and in particular local innovation and technology (I&T) development, as well as to attract more investment to Hong Kong.
“The current-term Government spares no effort in promoting I&T development, with a commitment of over $100 billion already. The OGP system is an integral part to the whole equation,”
“Apart from introducing the OGP system to obtain standard patents, the new patent system also refines the existing short-term patent system aiming to safeguard its integrity, for instance, by allowing the making of request to the Patents Registry to carry out substantive examination of the underlying invention after the grant of a short-term patent and allowing up to two independent claims,” said Wong.
Despite being in its infancy, the OGP system seems to have paid off handsomely with a fairly popular reception.
“So far, we have received more than 230 applications and we are processing them. Some 40 percent of those applications consist of domestic filings, and many of them are from SMEs and a good number are first filings globally. Many find it convenient to have direct filings in Hong Kong and securing first or earliest filing dates here,” said Wong.
“But it’s still too early to draw definitive views just yet,”
2019 also saw the introduction of bills to amend the Trade Marks Ordinance (to meet the requirements of the Madrid System) and the Copyright Ordinance (to align with the standards of the Marrakesh Treaty for the benefit of those with print disabilities). Both have been enacted.
“We also launched a New Integrated IT System that replaced five old systems to better and modernise our online search and end-to-end IP registration services, and brought it up to speed as soon as possible.” Wong added.
“There is a lot more to follow through," said Wong.
IP and the Pandemic
His cautious optimism is understandable, given the dampener that COVID-19 has placed on the business environment in 2020.
Though Wong acknowledges that the year has been overshadowed by the pandemic, he is grateful that the department has made the best of things through technology and concerted efforts of all colleagues.
Besides keeping operations going as smoothly as possible, the IPD launched an Inter-school IP Online Quiz Contest for primary and secondary schools in September 2020.
“So far, we’ve had over 18,000 students joining the contest. This is a huge jump from having some 1,300 students join the first contest in 2018,” said Wong. In addition, the department also launched a television commercial as part of its “No Fakes Pledge” campaign in October 2020 that netted over 600,000 online views since.
Following the launch of a reinvigorated IP Manager Scheme, the department has enriched its training programmes in both breadth and depth in content, attracting some 135 people to its first online-session in October.
The Government is also joining hands with the Hong Kong Trade Development Council and the Hong Kong Design Centre in organising the annual flagship event “Business of IP Asia Forum”. The 10th edition to be held online in December 2020 was set to welcome thousands of IP professionals and business leaders from all over the world.
All of these efforts tie in with the IPD’s mission of increasing IP awareness and literacy, which is also one of Wong’s key goals in his role.
“I assumed office with a humble heart, and a serious agency head responsibility to take on. This includes upholding the IPD’s fine tradition of providing quality and responsive IP registration services, giving best advice to Government on all matters relating to the IP regime, and championing IP in society,” he said.
30 Years of IPD Service
The IPD celebrated its 30 years of public service in July 2020.
“It started as a spin-off from the then Registrar General’s Department. It also took over functions relating to copyright from the Attorney General’s Chambers. In 1998, the department became the Government’s civil legal advisor on intellectual property legal matters,” Wong recalled.
The department started breaking new ground shortly after its establishment and 1994 saw the enactment of the Layout-Design (Topography) of Integrated Circuits Ordinance, the first law of this kind in the Asia-Pacific region, which the IPD was behind.
And 1997 saw the localisation of three pieces of legislation, namely the Registered Designs Ordinance, Patents Ordinance and Copyright Ordinance, which were followed by the enactment of a brand new Trade Marks Ordinance a few years later.
The late 90’s was a period for public education and community outreach to take off, with the “No Fakes Pledge” and “I Pledge” campaigns.
“Over 6,700 outlets, including 200 plus online shops, are now covered by the ‘No Fakes Pledge’ Scheme and the ‘I Pledge’ campaign currently has over 20,000 individual members. The number of those that are not aware of IP rights has dropped dramatically, from 40 percent in 1999 to 19 percent in 2018,” said Wong.
Going strong since 2015 in support of IP trading, the IP Manager Scheme plus the free IP Consultation Service have assisted Hong Kong enterprises, especially small and medium enterprises, to build up their IP manpower capacity and better manage and exploit IP assets.
The IPD’s efforts are also increasingly wider. It already has logged a long history of working with counterparts in Guangdong Province and Macao and has maintained international cooperation efforts.
“We are a member of the APEC IP Experts Group, and have joined hands with other member economies in promoting IP trading and commercialisation. At the bilateral level, the IPD has entered into Memorandums of Understanding with IP Offices in other jurisdictions to enhance our collaboration.” said Wong.
Going forth, Wong sees even bigger IP prospects for both the IPD and Hong Kong.
“Since Hong Kong’s positioning as an international innovation and technology centre, the OGP system is timely to catch up with needs for future economic development. We are only at the start of a journey to reform the patent system and tailor its development to meet the specific needs of Hong Kong,” he said.
“It needs to be effective in ensuring patent quality and stringent IP protection to encourage local and foreign enterprises to make R&D investment. We must also build our indigenous substantive examination capability over time, especially in niche areas where we may have expertise or an edge, with continued technical assistance from the China National Intellectual Property Administration,“ Wong said.
He believes launching the OGP system has already placed Hong Kong on the global IP map.
“This puts us on par with advanced economies and others which aspire to drive economic growth through innovation. Each has its own OGP system,” he said.
Wong has several things planned for 2021.
Some of these things involve the amendment of High Court Rules and subsidiary IP legislation to update litigation procedures, as fair and efficient court proceedings are crucial to a robust IP regime. Efforts will intensify to prepare amendment to the Trade Marks Rules (TMR) for the Madrid System, in drafting collaboration with the Department of Justice. The TMR amendments, coupled with IT development and other preparatory work, would enable Hong Kong to join the international trade mark registration system in 2022-2023 the earliest.
“The Madrid System covers markets that account for over 80% of the global trade. In tandem, we also aim to better the IP registration service and hearing procedures and further remote hearings,” said Wong.
He foresees more use of technology to reinvent operations, with a study already underway and to be completed in 2021 to provide a comprehensive review of the IPD’s IT infrastructure and service needs. It would help them in formulating a five-year tech plan, which may include the possible use of AI-assisted image search in their system, given some 450,000 trade marks on the statutory register.
Cooperation with Lawyers
Wong acknowledges the help he and the IPD have received over the years.
“IP practitioners, notably lawyers, have always been supportive of the IPD’s work. Other stakeholders like business communities, innovation and technology sector and the general public, have been important contributors too,” said Wong.
“The IPD has a small pool of just around 30 IP lawyers and 80 plus IP examiners. We need to harness the expertise and talent of the legal and IP professions and to keep abreast of happenings on the ground to stay two steps ahead,” he added.
Lawyers have been appointed to the Copyright Tribunal which the IPD services. It issued in December 2019 its very first landmark decision in a case started in 2010. Wong thanked the tribunal chairman Mr Huen Wong and two solicitor members involved for their long contributions.
He encouraged members of the Law Society to continue their good efforts in promoting IP literacy across society at all levels.
“We are grateful for past collaborations with the Law Society. The free IP Consultation Service for SMEs is underpinned by pro bono service of its members. The IP Committee of the Law Society and other IP practitioners’ bodies have been very supportive of the IP trading initiatives of the department. Together we can ‘wake up the innovator in an entrepreneur and also the entrepreneur in an innovator’,” Wong said.
He also encouraged legal professionals to continue giving the IPD professional views on keeping up with a robust, progressive IP regime and solid support for legislative work.
“The views of IP practitioners are always pivotal to our consultation on IP policy issues and legislative exercises to drive changes and improvements. Input from professionals is immensely important and we want to keep up the time-honoured constructive dialogue with IP practitioners and receive feedback to better our offerings,” Wong said.
“Last but not least, we welcome lawyers with commitment to public service and interest in IP to join our close-knit family. There is recruitment every few years. In the latest 2020 exercise, we had a very competitive recruitment process. We also welcome student interns and government legal trainees,” Wong said.