Frequently Asked Questions

💡 An invention can be eligible for patent protection if it satisfies certain criteria. These criteria include having a useful purpose, patentable subject matter, novelty, and inventiveness. A patent can cover various types of inventions, such as compositions, production processes, machines, tools, or improvements to existing inventions.

In general, technical solution or improvement of a technology that incorporates inventive concepts being involved may be protected by a patent. It is also possible that other types of IP are generated upon completion of research projects at the University, and these other forms of IP may be protected by other forms of IP registrations, such as registered designs or trademarks.

For further information, please refer to the explanations provided by the World Intellectual Property Organization.

💡 In most jurisdictions, the scope of patentable subject matter is explicitly defined, although it may vary between countries. Generally, exclusions from patentability encompass scientific theories and discoveries, artistic creations, mathematical methods, business methods, medical treatment methods, and computer programs.

An invention having weak patentability or unallowable subject matters for patent protection does not inherently diminish its usefulness or value. By adjusting the drafting approach and the scope of protection in a patent application, it is not impossible to meet the patentability requirements. Additionally, alternative forms of IP protection, such as design registration or software registration, can be pursued to safeguard specific types of invention.

For further information, please refer to the explanations provided by the World Intellectual Property Organization.

💡 As early as an invention is fully conceptualized, and when at least one working example has been devised.

It is always preferred that when a patent application is filed, it contains all necessary technical details, explanations and/or experimental data that supports enablement of the invention. Subsequent addition of new matters in a patent application is rarely allowed without redating the application or refiling a new/ top-up application.

💡 To protect the patentability and novelty of an invention or other types of IP, the Inventor shall not publish or make public disclosure of the subject matter prior to filing an application for patent or other forms of IP. The Inventor should seek advice from KTEO on the suitability of disclosure of any information relating to the invention or the IP.

This is because any public disclosure of the invention prior to filing may be considered as "prior art" and taken into account during the examination process. The prior art status of the disclosure can impact the assessment of whether the invention meets the criteria of novelty and inventiveness. The same provision is also applicable to design registrations.

Some countries may allow a patent application being filed, within a grace period of several months, after public disclosure of the invention. Whilst this is true, such grace period is available in only a few countries, which means the invention would become unpatentable in many countries of major interest, including China. In case public disclosure must be made urgently before submission of an invention disclosure form, please contact KTEO as soon as possible.

Inventors are also reminded to observe any obligation of confidentiality and shall not publish or disclose any information relating to the invention to any unauthorized party without a proper confidentiality agreement, such as a Non-Disclosure Agreement, in place. The approval of such Non-Disclosure Agreement shall follow the procedure as set out in the “Guidelines on Memorandum of Understanding/ Agreement/ Letter of Intent” of the University.

For further information, please refer to the explanations provided by the World Intellectual Property Organization.

💡 According to the University’s IP policy, the University may at its sole discretion decide to apply for legal protection at its expenses for any IP it owns by way of applying for patent or other registration. The methods and extent of protection shall be determined by the Management of the University upon consultation with the Inventor concerned and other relevant experts. The University shall have the right to make the final decision.

KTEO serves as an IP administrative unit responsible for managing the University's IP. To facilitate IP management function of the offices, KTEO entrusts a number of tendered IP agents in Mainland China, Hong Kong and the US to as external counsels to represent PolyU to apply for, prosecute and maintain the University's IP being registered at IP offices in different countries.

KTEO is committed to supporting Staff Members throughout the patent application process. Inventors are obligated to notify KTEO for the purpose of invention disclosure and should never appoint any other agents/attorneys to handle patent application or other IP registrations, regardless of whether the invention is solely owned by the University or co-owned with other parties.

💡 Patents are territorial in nature, only conferring exclusive rights within the jurisdiction where the patent has been filed. Factors such as commercialization opportunities, market presence, manufacturing locations, etc. can be considered

Budgetary constraints may also be a factor that affect the eventual IP strategy as the cost may vary significantly depending on the landscape of the IP portfolio. For effective use of the University’s budget associated with filing and maintaining patents, KTEO may initially seek project or Department funding to provide financial support for IP Expenses. The University may consider providing the funding for the application if there is no or insufficient project or Department funding available.

💡 The expenses associated with filing a patent, encompassing official fees and professional charges, can exhibit substantial variation contingent upon the patent filing strategy and the jurisdictions involved. As a general estimate, the total cost for a patent, covering the patent application, prosecution, and maintenance throughout its 20-year lifespan, could amount to approximately HKD 200,000.

It may be impractical to always consider the total budget required for patenting an invention until it become expire. A more sensible estimation is that an initial budget of HKD 15,000 to 75,000 should be enough to cover a cost incurred for a first patent filing in a single country/ jurisdiction, depending on a complexity of the invention and which country for first filing is recommended.

💡 Generally speaking, getting an application successfully filed is considered the most important event in the entire patent application process as most critical dates of a patent application are calculated based on the application date assigned. It usually takes 2-3 years for the application being subsequently examined by a patent examiner before a patent application may proceed to grant, except for some special types of patent applications that do not involve substantive examination of the application by the patent office.

There are limited options to accelerate a patent application processed by a patent office in some jurisdictions, subjecting to additional service cost and eligibility criteria based on the nature of the invention. In case there is a special need to obtain a granted patent earlier, either before the application has been filed or at any time when the application is pending, please consult KTEO.

💡 Our patent agent may necessitate inventor's technical input during the patent drafting and prosecution stage. Inventor's expertise plays a vital role in distinguishing the technical attributes of our inventions from the prior arts. Inventor's timely response to the technical enquiries can significantly expedite the patent application process.

For further information, please refer to the explanations provided by the US Patent and Trademark Office.

💡 All IP made by PolyU staff and students belong to and vest in the University and be owned exclusively by the University, and shall continue to vest in the University even after inventors in concerned have left the University, unless the University decides to disclaim ownership of IP and assign the IP back to the PolyU staff or students in concern by written agreement approved by the Management of the University.

Should any other parties have legitimate claims to ownership or rights due to their contributions, Staff Members are obligated for promptly notifying the University of such claims before a patent application.

💡 Generally speaking, an inventor is defined as someone who has made a significant intellectual contribution to the conception of the invention. Mere participation in performing experiments or tests under the guidance of another does not qualify an individual as an inventor. Defining the share of Intellectual Property Rights (IPR) among inventors before a patent application is crucial to prevent future dispute in benefit sharing of the IPR, it also allow the University to correctly identify ownership of an IP to prevent any IP entitlement dispute.

Inventors are advised to use their best endeavors to keep and maintain full records of all materials, regardless of their forms. Inventors should also maintain records identifying the name of the author and the date of creation or amendment of works, which may be useful for proving enablement and inventorship of the invention.

For further information, please refer to the explanations provided by the US Patent and Trademark Office.

💡 The University has the option to license its IPs to industry players. Conversely, inventors could pursue the entrepreneurial path, establishing their own startup ventures and licensing University's inventions.

In contemplation of commercialization of specific IP, KTEO will consider, along with industry experts as required, the merit of the engagement in line with the Guidelines for IP Licensing and Assignment. The process of entering into relevant commercialization agreements will be transparent and publicly accountable, under the guidance of Technology Transfer Assessment Committee (TTAC) comprising of senior University staff and external members.

💡 The major factors that determine licensing considerations include the exclusivity, territory, duration, and field of use of the license, as well as the value of the licensed IP and its readiness for commercialization.

💡 The valuation of an IP can be based on several key factors, which are the technology value, economic value, and legal value of the IP.

For further information, please refer to the explanations provided by the World Intellectual Property Organization.