PATENTS ORDINANCE - CHAPTER 514 PATENTS ORDINANCE - LONG TITLE Long title VerDate:30/06/1997 An Ordinance to make new provision in respect of patents and related matters in substitution for the Registration of Patents Ordinance. [The Ordinance, other than section 125 } 27 June 1997 Section 125 } 1 July 1997 L.N. 367 of 1997] (Originally 52 of 1997) PATENTS ORDINANCE - SECT 1 Short title VerDate:30/06/1997 PART I PRELIMINARY (1) This Ordinance may be cited as the Patents Ordinance. (2) (Omitted as spent) PATENTS ORDINANCE - SECT 2 Interpretation VerDate:22/02/2008 (1) In this Ordinance, unless the context otherwise requires- "application for a patent" (專利的申請) means an application for a standard patent or an application for a short-term patent; "court" (法院) means the Court of First Instance; (Amended 25 of 1998 s. 2) "date of filing" (提交日期)- (a) in relation to a request to record or a request for registration and grant, means the date which is the date of filing that request by virtue of section 17 or 24 respectively; (b) in relation to an application for a standard patent has the meaning specified in relation to that term in section 3(ii); (c) in relation to a designated patent application, means the date specified as such in the designated patent application; "Doha Declaration" (《多哈宣言》) means the Declaration on the TRIPS Agreement and Public Health adopted on 14 November 2001 by the Fourth WTO Ministerial Conference at Doha, Qatar; (Added 21 of 2007 s. 3) "eligible importing member" (合資格進口成員地) means- (a) a WTO member country, territory or area recognized by the United Nations as being a least-developed country; or (b) any other WTO member country, territory or area that has given notice in writing to the TRIPS Council that it intends to import pharmaceutical products in accordance with the General Council Decision or the Protocol; (Added 21 of 2007 s. 3) "employee" (僱員) means a person who works or (where the employment has ceased) worked under a contract of employment (whether with the Government or with any other person); "employer" (僱主), in relation to an employee, means the person by whom the employee is or was employed; "exclusive licence" (專用特許) means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorized by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application for a patent relates, and "exclusive licensee" (專用特許持有人) and "non-exclusive licence" (非專用特許) shall be construed accordingly; "exporting member" (出口成員地) means a WTO member country, territory or area that makes a patented pharmaceutical product for export to an eligible importing member in accordance with the General Council Decision or the Protocol; (Added 21 of 2007 s. 3) "General Council Decision" (《總理事會決定》) means the Decision adopted by the General Council of the WTO on 30 August 2003 on the Implementation of Paragraph 6 of the Doha Declaration; (Added 21 of 2007 s. 3) "international application" (國際申請) means an international application for a patent made under the Patent Cooperation Treaty; "International Bureau" (國際局) means the International Bureau of Intellectual Property provided for under the Convention Establishing the World Intellectual Property Organization signed at Stockholm on 14 July 1967; "law of the designated patent office" (指定專利當局的法律) means- (a) in relation to a designated patent office established under the law of any country, territory or area other than Hong Kong, the law of that country, territory or area; (b) in relation to a designated patent office established under an international agreement, the provisions of the international agreement; "mortgage" (按揭) when used as a noun, includes a charge for securing money or money's worth and, when used as a verb, shall be construed accordingly; "non-prejudicial disclosure" (不具損害性的披露) means, in relation to an invention, a disclosure of the invention which is not to be taken into consideration for the purposes of determining whether or not the invention forms part of the state of the art; "official journal" (官方公報) means the publication for the time being specified under section 150A as the official journal of record; (Added 2 of 2001 s. 2) "opposition or revocation proceedings" (反對或撤銷專利的法律程序) means, in relation to a designated patent, proceedings under the law of the designated patent office providing for the revocation or amendment of the designated patent within a specified period after the grant; "Paris Convention" (《巴黎公約》) means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883, as revised or amended from time to time; (Amended 2 of 2001 s. 2) "Paris Convention country" (巴黎公約國) means- (a) any country for the time being specified in Schedule 1 as being a country which has acceded to the Paris Convention; (b) any territory or area subject to the authority or under the suzerainty of any country specified in Schedule 1 pursuant to paragraph (a), or any territory or area administered by any such country, on behalf of which such country has acceded to the Paris Convention; "patent application" (專利申請) has the same meaning as an application for a patent; "Patent Cooperation Treaty" (《專利合作條約》) means the treaty of that name done at Washington on 19 June 1970, as revised or amended from time to time; (Amended 2 of 2001 s. 2) "patented invention" (專利發明) means an invention for which a standard patent or, as the case may be, a short-term patent is granted and "patented process" (專利方法) shall be construed accordingly; "patented pharmaceutical product" (專利藥劑製品) means- (a) a pharmaceutical product which is an invention for which a standard patent or a short-term patent (as the case may be) has been granted; (b) in relation to a process for which a standard patent or a short-term patent (as the case may be) has been granted, a pharmaceutical product obtained directly by means of the process or to which the process has been applied; (Added 21 of 2007 s. 3) "patented product" (專利產品) means- (a) a product which is an invention for which a standard patent or a short-term patent (as the case may be) has been granted; (b) in relation to a process for which a standard patent or a short-term patent (as the case may be) has been granted, a product obtained directly by means of the process or to which the process has been applied; "pharmaceutical product" (藥劑製品) means- (a) a pharmaceutical product within the meaning of section 2(1) of the Pharmacy and Poisons Ordinance (Cap 138); (b) an active ingredient that is needed for making of a pharmaceutical product mentioned in paragraph (a); or (c) a diagnostic kit that is needed for the use of a pharmaceutical product mentioned in paragraph (a); (Added 21 of 2007 s. 3) "prescribed" (訂明) means prescribed or provided for by rules made under section 149; "protected layout-design (topography)" (受保護的布圖設計(拓撲圖)) has the meaning assigned to that term by section 2(1) of the Layout-design (Topography) of Integrated Circuits Ordinance (Cap 445); "Protocol" (《日內瓦議定書》) means the Protocol Amending the TRIPS Agreement adopted by the General Council of the WTO at Geneva on 6 December 2005, the Annex to the Protocol Amending the TRIPS Agreement, the Annex to the TRIPS Agreement and the Appendix to the Annex to the TRIPS Agreement; (Added 21 of 2007 s. 3) "register" (註冊紀錄冊、註冊)- (a) as a noun, means the register of patents kept under section 51; and (b) as a verb, means, in relation to any thing, to register or register particulars, or enter notice of that thing in the register and, in relation to a person, means to enter his name in the register, and cognate expressions shall be construed accordingly; "Registrar" (處長) means the Registrar of Patents; "Registrar of Patents" (專利註冊處處長) means the person holding that office by virtue of the Director of Intellectual Property (Establishment) Ordinance (Cap 412); "registry" (註冊處) means the Patents Registry administered by the Registrar; "relevant instrument or legislation" (有關文書或法例) means- (a) the General Council Decision; (b) the Protocol; or (c) legislation made by the exporting member or the eligible importing member, as the case may be, pursuant to or for the purpose of implementing- (i) the General Council Decision; or (ii) the Protocol; (Added 21 of 2007 s. 3) "request for registration and grant" (註冊與批予請求) means a request under section 23 for the registration of a designated patent and the grant of a standard patent for the invention shown in the published specification of the designated patent; "request to record" (記錄請求) means a request under section 15 to record a designated patent application; "right" (權利), in relation to any patent or patent application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent; "rules" (規則) means rules made by the Registrar under section 149; "short-term patent" (短期專利) means a patent for an invention granted under Part XV; "short-term patent application" (短期專利申請) means an application under Part XV for a short-term patent; "specification"' (說明書), in relation to an application for a patent under this Ordinance, a designated patent application or an international application, means the description, claims and drawings contained in the application; "standard patent" (標準專利) means a patent for an invention granted under Part II; "standard patent application" (標準專利申請) means an application under Part II for a standard patent; "TRIPS Agreement" (《知識產權協議》) means the Agreement on Trade-Related Aspects of Intellectual Property Rights, being Annex 1C of the World Trade Organisation Agreement; (Added 21 of 2007 s. 3) "TRIPS Council" (知識產權理事會) means the Council for Trade-Related Aspects of Intellectual Property Rights referred to in Article 68 of the TRIPS Agreement; (Added 21 of 2007 s. 3) "verified copy" (核實副本) means, in relation to a document, a copy verified in the prescribed manner; "World Trade Organisation Agreement" (《世界貿易組織協議》) means the agreement of that name done at Marrakesh in 1994, as revised or amended from time to time; (Amended 2 of 2001 s. 2) "WTO" (世界貿易組織) means the World Trade Organisation established in Geneva on 1 January 1995 under the World Trade Organisation Agreement; (Added 21 of 2007 s. 3) "WTO member country, territory or area" (世界貿易組織成員國、地區或地方) means any country, territory or area for the time being specified in Schedule 1 as being a country, territory or area which has acceded to the World Trade Organisation Agreement. (2) The expressions listed in the left-hand column below are defined in, or fall to be construed in accordance with, the provisions of this Ordinance listed in the right-hand column in relation to those expressions. Expression Relevant Provision Application for a standard patent (標準專利的申請) section 3 Corresponding designated patent (相應指定專利) section 4 Corresponding designated patent application (相應指定專利申請) section 4 Deemed date of filing (當作提交日期) section 38 Designated patent (指定專利) section 4 Designated patent application (指定專利申請) section 4 Divisional designated patent application (指定專利的分開申請) section 22(1) Government use (政府徵用) section 69(2) Paris Convention country (巴黎公約國) section 98(6) Patent (專利) section 6(1) Published (發表) section 5 Work (實施) section 6(4) "application for a patent" (專利的申請) "court" (法院) "date of filing" (提交日期) "Doha Declaration" (《多哈宣言》) "eligible importing member" (合資格進口成員地) "employee" (僱員) "employer" (僱主) "exclusive licence" (專用特許) "exclusive licensee" (專用特許持有人) and "non-exclusive licence" (非專用特許) "exporting member" (出口成員地) "General Council Decision" (《總理事會決定》) "international application" (國際申請) "International Bureau" (國際局) "law of the designated patent office" (指定專利當局的法律) "mortgage" (按揭) "non-prejudicial disclosure" (不具損害性的披露) "official journal" (官方公報) "opposition or revocation proceedings" (反對或撤銷專利的法律程序) "Paris Convention" (《巴黎公約》) "Paris Convention country" (巴黎公約國) "patent application" (專利申請) "Patent Cooperation Treaty" (《專利合作條約》) "patented invention" (專利發明) "patented process" (專利方法) "patented pharmaceutical product" (專利藥劑製品) "patented product" (專利產品) "pharmaceutical product" (藥劑製品) "prescribed" (訂明) "protected layout-design (topography)" (受保護的布圖設計(拓撲圖)) "Protocol" (《日內瓦議定書》) "register" (註冊紀錄冊、註冊) "Registrar" (處長) "Registrar of Patents" (專利註冊處處長) "registry" (註冊處) "relevant instrument or legislation" (有關文書或法例) "request for registration and grant" (註冊與批予請求) "request to record" (記錄請求) "right" (權利) "rules" (規則) "short-term patent" (短期專利) "short-term patent application" (短期專利申請) "specification"' (說明書) "standard patent" (標準專利) "standard patent application" (標準專利申請) "TRIPS Agreement" (《知識產權協議》) "TRIPS Council" (知識產權理事會) "verified copy" (核實副本) "World Trade Organisation Agreement" (《世界貿易組織協議》) "WTO" (世界貿易組織) "WTO member country, territory or area" (世界貿易組織成員國、地區或地方) PATENTS ORDINANCE - SECT 2 Interpretation VerDate:07/05/2004 (1) In this Ordinance, unless the context otherwise requires- "application for a patent" (專利的申請) means an application for a standard patent or an application for a short-term patent; "court" (法院) means the Court of First Instance; (Amended 25 of 1998 s. 2) "date of filing" (提交日期)- (a) in relation to a request to record or a request for registration and grant, means the date which is the date of filing that request by virtue of section 17 or 24 respectively; (b) in relation to an application for a standard patent has the meaning specified in relation to that term in section 3(ii); (c) in relation to a designated patent application, means the date specified as such in the designated patent application; "employee" (僱員) means a person who works or (where the employment has ceased) worked under a contract of employment (whether with the Government or with any other person); "employer" (僱主), in relation to an employee, means the person by whom the employee is or was employed; "exclusive licence" (專用特許) means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorized by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application for a patent relates, and "exclusive licensee" (專用特許持有人) and "non-exclusive licence" (非專用特許) shall be construed accordingly; "international application" (國際申請) means an international application for a patent made under the Patent Cooperation Treaty; "International Bureau" (國際局) means the International Bureau of Intellectual Property provided for under the Convention Establishing the World Intellectual Property Organization signed at Stockholm on 14 July 1967; "law of the designated patent office" (指定專利當局的法律) means- (a) in relation to a designated patent office established under the law of any country, territory or area other than Hong Kong, the law of that country, territory or area; (b) in relation to a designated patent office established under an international agreement, the provisions of the international agreement; "mortgage" (按揭) when used as a noun, includes a charge for securing money or money's worth and, when used as a verb, shall be construed accordingly; "non-prejudicial disclosure" (不具損害性的披露) means, in relation to an invention, a disclosure of the invention which is not to be taken into consideration for the purposes of determining whether or not the invention forms part of the state of the art; "official journal" (官方公報) means the publication for the time being specified under section 150A as the official journal of record; (Added 2 of 2001 s. 2) "opposition or revocation proceedings" (反對或撤銷專利的法律程序) means, in relation to a designated patent, proceedings under the law of the designated patent office providing for the revocation or amendment of the designated patent within a specified period after the grant; "Paris Convention" (《巴黎公約》) means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883, as revised or amended from time to time; (Amended 2 of 2001 s. 2) "Paris Convention country" (巴黎公約國) means- (a) any country for the time being specified in Schedule 1 as being a country which has acceded to the Paris Convention; (b) any territory or area subject to the authority or under the suzerainty of any country specified in Schedule 1 pursuant to paragraph (a), or any territory or area administered by any such country, on behalf of which such country has acceded to the Paris Convention; "patent application" (專利申請) has the same meaning as an application for a patent; "Patent Cooperation Treaty" (《專利合作條約》) means the treaty of that name done at Washington on 19 June 1970, as revised or amended from time to time; (Amended 2 of 2001 s. 2) "patented invention" (專利發明) means an invention for which a standard patent or, as the case may be, a short-term patent is granted and "patented process" (專利方法) shall be construed accordingly; "patented product" (專利產品) means- (a) a product which is an invention for which a standard patent or a short-term patent (as the case may be) has been granted; (b) in relation to a process for which a standard patent or a short-term patent (as the case may be) has been granted, a product obtained directly by means of the process or to which the process has been applied; "prescribed" (訂明) means prescribed or provided for by rules made under section 149; "protected layout-design (topography)" (受保護的布圖設計(拓撲圖)) has the meaning assigned to that term by section 2(1) of the Layout-design (Topography) of Integrated Circuits Ordinance (Cap 445); "register" (註冊紀錄冊、註冊)- (a) as a noun, means the register of patents kept under section 51; and (b) as a verb, means, in relation to any thing, to register or register particulars, or enter notice of that thing in the register and, in relation to a person, means to enter his name in the register, and cognate expressions shall be construed accordingly; "Registrar" (處長) means the Registrar of Patents; "Registrar of Patents" (專利註冊處處長) means the person holding that office by virtue of the Director of Intellectual Property (Establishment) Ordinance (Cap 412); "registry" (註冊處) means the Patents Registry administered by the Registrar; "request for registration and grant" (註冊與批予請求) means a request under section 23 for the registration of a designated patent and the grant of a standard patent for the invention shown in the published specification of the designated patent; "request to record" (記錄請求) means a request under section 15 to record a designated patent application; "right" (權利), in relation to any patent or patent application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent; "rules" (規則) means rules made by the Registrar under section 149; "short-term patent" (短期專利) means a patent for an invention granted under Part XV; "short-term patent application" (短期專利申請) means an application under Part XV for a short-term patent; "specification"' (說明書), in relation to an application for a patent under this Ordinance, a designated patent application or an international application, means the description, claims and drawings contained in the application; "standard patent" (標準專利) means a patent for an invention granted under Part II; "standard patent application" (標準專利申請) means an application under Part II for a standard patent; "verified copy" (核實副本) means, in relation to a document, a copy verified in the prescribed manner; "World Trade Organisation Agreement" (《世界貿易組織協議》) means the agreement of that name done at Marrakesh in 1994, as revised or amended from time to time; (Amended 2 of 2001 s. 2) "WTO member country, territory or area" (世界貿易組織成員國、地區或地方) means any country, territory or area for the time being specified in Schedule 1 as being a country, territory or area which has acceded to the World Trade Organisation Agreement. (2) The expressions listed in the left-hand column below are defined in, or fall to be construed in accordance with, the provisions of this Ordinance listed in the right-hand column in relation to those expressions. Expression Relevant Provision Application for a standard patent (標準專利的申請) section 3 Corresponding designated patent (相應指定專利) section 4 Corresponding designated patent application (相應指定專利申請) section 4 Deemed date of filing (當作提交日期) section 38 Designated patent (指定專利) section 4 Designated patent application (指定專利申請) section 4 Divisional designated patent application (指定專利的分開申請) section 22(1) Government use (政府徵用) section 69(2) Paris Convention country (巴黎公約國) section 98(6) Patent (專利) section 6(1) Published (發表) section 5 Work (實施) section 6(4) "application for a patent" (專利的申請) "court" (法院) "date of filing" (提交日期) "employee" (僱員) "employer" (僱主) "exclusive licence" (專用特許) "exclusive licensee" (專用特許持有人) and "non-exclusive licence" (非專用特許) "international application" (國際申請) "International Bureau" (國際局) "law of the designated patent office" (指定專利當局的法律) "mortgage" (按揭) "non-prejudicial disclosure" (不具損害性的披露) "official journal" (官方公報) "opposition or revocation proceedings" (反對或撤銷專利的法律程序) "Paris Convention" (《巴黎公約》) "Paris Convention country" (巴黎公約國) "patent application" (專利申請) "Patent Cooperation Treaty" (《專利合作條約》) "patented invention" (專利發明) "patented process" (專利方法) "patented product" (專利產品) "prescribed" (訂明) "protected layout-design (topography)" (受保護的布圖設計(拓撲圖)) "register" (註冊紀錄冊、註冊) "Registrar" (處長) "Registrar of Patents" (專利註冊處處長) "registry" (註冊處) "request for registration and grant" (註冊與批予請求) "request to record" (記錄請求) "right" (權利) "rules" (規則) "short-term patent" (短期專利) "short-term patent application" (短期專利申請) "specification"' (說明書) "standard patent" (標準專利) "standard patent application" (標準專利申請) "verified copy" (核實副本) "World Trade Organisation Agreement" (《世界貿易組織協議》) "WTO member country, territory or area" (世界貿易組織成員國、地區或地方) PATENTS ORDINANCE - SECT 2 Interpretation VerDate:01/06/2002 (1) In this Ordinance, unless the context otherwise requires- "application for a patent" (專利的申請) means an application for a standard patent or an application for a short-term patent; "court" (法院) means the Court of First Instance; (Amended 25 of 1998 s. 2) "date of filing" (提交日期)- (a) in relation to a request to record or a request for registration and grant, means the date which is the date of filing that request by virtue of section 17 or 24 respectively; (b) in relation to an application for a standard patent has the meaning specified in relation to that term in section 3(ii); (c) in relation to a designated patent application, means the date specified as such in the designated patent application; "employee" (僱員) means a person who works or (where the employment has ceased) worked under a contract of employment (whether with the Government or with any other person); "employer" (僱主), in relation to an employee, means the person by whom the employee is or was employed; "exclusive licence" (專用特許) means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorized by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application for a patent relates, and "exclusive licensee" (專用特許持有人) and "non-exclusive licence" (非專用特許) shall be construed accordingly; "international application" (國際申請) means an international application for a patent made under the Patent Cooperation Treaty; "International Bureau" (國際局) means the International Bureau of Intellectual Property provided for under the Convention Establishing the World Intellectual Property Organization signed at Stockholm on 14 July 1967; "law of the designated patent office" (指定專利當局的法律) means- (a) in relation to a designated patent office established under the law of any country, territory or area other than Hong Kong, the law of that country, territory or area; (b) in relation to a designated patent office established under an international agreement, the provisions of the international agreement; "mortgage" (按揭) when used as a noun, includes a charge for securing money or money's worth and, when used as a verb, shall be construed accordingly; "non-prejudicial disclosure" (不具損害性的披露) means, in relation to an invention, a disclosure of the invention which is not to be taken into consideration for the purposes of determining whether or not the invention forms part of the state of the art; "opposition or revocation proceedings" (反對或撤銷專利的法律程序) means, in relation to a designated patent, proceedings under the law of the designated patent office providing for the revocation or amendment of the designated patent within a specified period after the grant; "Paris Convention" (《巴黎公約》) means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883, as revised or amended from time to time; (Amended 2 of 2001 s. 2) "Paris Convention country" (巴黎公約國) means- (a) any country for the time being specified in Schedule 1 as being a country which has acceded to the Paris Convention; (b) any territory or area subject to the authority or under the suzerainty of any country specified in Schedule 1 pursuant to paragraph (a), or any territory or area administered by any such country, on behalf of which such country has acceded to the Paris Convention; "patent application" (專利申請) has the same meaning as an application for a patent; "Patent Cooperation Treaty" (《專利合作條約》) means the treaty of that name done at Washington on 19 June 1970, as revised or amended from time to time; (Amended 2 of 2001 s. 2) "patented invention" (專利發明) means an invention for which a standard patent or, as the case may be, a short-term patent is granted and "patented process" (專利方法) shall be construed accordingly; "patented product" (專利產品) means- (a) a product which is an invention for which a standard patent or a short-term patent (as the case may be) has been granted; (b) in relation to a process for which a standard patent or a short-term patent (as the case may be) has been granted, a product obtained directly by means of the process or to which the process has been applied; "prescribed" (訂明) means prescribed or provided for by rules made under section 149; "protected layout-design (topography)" (受保護的布圖設計(拓撲圖)) has the meaning assigned to that term by section 2(1) of the Layout-design (Topography) of Integrated Circuits Ordinance (Cap 445); "register" (註冊紀錄冊、註冊)- (a) as a noun, means the register of patents kept under section 51; and (b) as a verb, means, in relation to any thing, to register or register particulars, or enter notice of that thing in the register and, in relation to a person, means to enter his name in the register, and cognate expressions shall be construed accordingly; "Registrar" (處長) means the Registrar of Patents; "Registrar of Patents" (專利註冊處處長) means the person holding that office by virtue of the Director of Intellectual Property (Establishment) Ordinance (Cap 412); "registry" (註冊處) means the Patents Registry administered by the Registrar; "request for registration and grant" (註冊與批予請求) means a request under section 23 for the registration of a designated patent and the grant of a standard patent for the invention shown in the published specification of the designated patent; "request to record" (記錄請求) means a request under section 15 to record a designated patent application; "right" (權利), in relation to any patent or patent application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent; "rules" (規則) means rules made by the Registrar under section 149; "short-term patent" (短期專利) means a patent for an invention granted under Part XV; "short-term patent application" (短期專利申請) means an application under Part XV for a short-term patent; "specification"' (說明書), in relation to an application for a patent under this Ordinance, a designated patent application or an international application, means the description, claims and drawings contained in the application; "standard patent" (標準專利) means a patent for an invention granted under Part II; "standard patent application" (標準專利申請) means an application under Part II for a standard patent; "verified copy" (核實副本) means, in relation to a document, a copy verified in the prescribed manner; "World Trade Organisation Agreement" (《世界貿易組織協議》) means the agreement of that name done at Marrakesh in 1994, as revised or amended from time to time; (Amended 2 of 2001 s. 2) "WTO member country, territory or area" (世界貿易組織成員國、地區或地方) means any country, territory or area for the time being specified in Schedule 1 as being a country, territory or area which has acceded to the World Trade Organisation Agreement. (2) The expressions listed in the left-hand column below are defined in, or fall to be construed in accordance with, the provisions of this Ordinance listed in the right-hand column in relation to those expressions. Expression Relevant Provision Application for a standard patent (標準專利的申請) section 3 Corresponding designated patent (相應指定專利) section 4 Corresponding designated patent application (相應指定專利申請) section 4 Deemed date of filing (當作提交日期) section 38 Designated patent (指定專利) section 4 Designated patent application (指定專利申請) section 4 Divisional designated patent application (指定專利的分開申請) section 22(1) Government use (政府徵用) section 69(2) Paris Convention country (巴黎公約國) section 98(6) Patent (專利) section 6(1) Published (發表) section 5 Work (實施) section 6(4) "application for a patent" (專利的申請) "court" (法院) "date of filing" (提交日期) "employee" (僱員) "employer" (僱主) "exclusive licence" (專用特許) "exclusive licensee" (專用特許持有人) and "non-exclusive licence" (非專用特許) "international application" (國際申請) "International Bureau" (國際局) "law of the designated patent office" (指定專利當局的法律) "mortgage" (按揭) "non-prejudicial disclosure" (不具損害性的披露) "opposition or revocation proceedings" (反對或撤銷專利的法律程序) "Paris Convention" (《巴黎公約》) "Paris Convention country" (巴黎公約國) "patent application" (專利申請) "Patent Cooperation Treaty" (《專利合作條約》) "patented invention" (專利發明) "patented process" (專利方法) "patented product" (專利產品) "prescribed" (訂明) "protected layout-design (topography)" (受保護的布圖設計(拓撲圖)) "register" (註冊紀錄冊、註冊) "Registrar" (處長) "Registrar of Patents" (專利註冊處處長) "registry" (註冊處) "request for registration and grant" (註冊與批予請求) "request to record" (記錄請求) "right" (權利) "rules" (規則) "short-term patent" (短期專利) "short-term patent application" (短期專利申請) "specification"' (說明書) "standard patent" (標準專利) "standard patent application" (標準專利申請) "verified copy" (核實副本) "World Trade Organisation Agreement" (《世界貿易組織協議》) "WTO member country, territory or area" (世界貿易組織成員國、地區或地方) PATENTS ORDINANCE - SECT 2 Interpretation VerDate:01/07/1997 Adaptation amendments retroactively made-see 25 of 1998 s. 2 (1) In this Ordinance, unless the context otherwise requires- "application for a patent" (專利的申請) means an application for a standard patent or an application for a short-term patent; "court" (法院) means the Court of First Instance; (Amended 25 of 1998 s. 2) "date of filing" (提交日期)- (a) in relation to a request to record or a request for registration and grant, means the date which is the date of filing that request by virtue of section 17 or 24 respectively; (b) in relation to an application for a standard patent has the meaning specified in relation to that term in section 3(ii); (c) in relation to a designated patent application, means the date specified as such in the designated patent application; "employee" (僱員) means a person who works or (where the employment has ceased) worked under a contract of employment (whether with the Government or with any other person); "employer" (僱主), in relation to an employee, means the person by whom the employee is or was employed; "exclusive licence" (專用特許) means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorized by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application for a patent relates, and "exclusive licensee" (專用特許持有人) and "non-exclusive licence" (非專用特許) shall be construed accordingly; "international application" (國際申請) means an international application for a patent made under the Patent Cooperation Treaty; "International Bureau" (國際局) means the International Bureau of Intellectual Property provided for under the Convention Establishing the World Intellectual Property Organization signed at Stockholm on 14 July 1967; "law of the designated patent office" (指定專利當局的法律) means- (a) in relation to a designated patent office established under the law of any country, territory or area other than Hong Kong, the law of that country, territory or area; (b) in relation to a designated patent office established under an international agreement, the provisions of the international agreement; "mortgage" (按揭) when used as a noun, includes a charge for securing money or money's worth and, when used as a verb, shall be construed accordingly; "non-prejudicial disclosure" (不具損害性的披露) means, in relation to an invention, a disclosure of the invention which is not to be taken into consideration for the purposes of determining whether or not the invention forms part of the state of the art; "opposition or revocation proceedings" (反對或撤銷專利的法律程序) means, in relation to a designated patent, proceedings under the law of the designated patent office providing for the revocation or amendment of the designated patent within a specified period after the grant; "Paris Convention" (《巴黎公約》) means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883; "Paris Convention country" (巴黎公約國) means- (a) any country for the time being specified in Schedule 1 as being a country which has acceded to the Paris Convention; (b) any territory or area subject to the authority or under the suzerainty of any country specified in Schedule 1 pursuant to paragraph (a), or any territory or area administered by any such country, on behalf of which such country has acceded to the Paris Convention; "patent application" (專利申請) has the same meaning as an application for a patent; "Patent Cooperation Treaty" (《專利合作條約》) means the treaty of that name done at Washington on 19 June 1970; "patented invention" (專利發明) means an invention for which a standard patent or, as the case may be, a short-term patent is granted and "patented process" (專利方法) shall be construed accordingly; "patented product" (專利產品) means- (a) a product which is an invention for which a standard patent or a short-term patent (as the case may be) has been granted; (b) in relation to a process for which a standard patent or a short-term patent (as the case may be) has been granted, a product obtained directly by means of the process or to which the process has been applied; "prescribed" (訂明) means prescribed or provided for by rules made under section 149; "protected layout-design (topography)" (受保護的布圖設計(拓撲圖)) has the meaning assigned to that term by section 2(1) of the Layout-design (Topography) of Integrated Circuits Ordinance (Cap 445); "register" (註冊紀錄冊、註冊)- (a) as a noun, means the register of patents kept under section 51; and (b) as a verb, means, in relation to any thing, to register or register particulars, or enter notice of that thing in the register and, in relation to a person, means to enter his name in the register, and cognate expressions shall be construed accordingly; "Registrar" (處長) means the Registrar of Patents; "Registrar of Patents" (專利註冊處處長) means the person holding that office by virtue of the Director of Intellectual Property (Establishment) Ordinance (Cap 412); "registry" (註冊處) means the Patents Registry administered by the Registrar; "request for registration and grant" (註冊與批予請求) means a request under section 23 for the registration of a designated patent and the grant of a standard patent for the invention shown in the published specification of the designated patent; "request to record" (記錄請求) means a request under section 15 to record a designated patent application; "right" (權利), in relation to any patent or patent application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent; "rules" (規則) means rules made by the Registrar under section 149; "short-term patent" (短期專利) means a patent for an invention granted under Part XV; "short-term patent application" (短期專利申請) means an application under Part XV for a short-term patent; "specification"' (說明書), in relation to an application for a patent under this Ordinance, a designated patent application or an international application, means the description, claims and drawings contained in the application; "standard patent" (標準專利) means a patent for an invention granted under Part II; "standard patent application" (標準專利申請) means an application under Part II for a standard patent; "verified copy" (核實副本) means, in relation to a document, a copy verified in the prescribed manner; "World Trade Organisation Agreement" (《世界貿易組織協議》) means the agreement of that name done at Marrakesh in 1994; "WTO member country, territory or area" (世界貿易組織成員國、地區或地方) means any country, territory or area for the time being specified in Schedule 1 as being a country, territory or area which has acceded to the World Trade Organisation Agreement. (2) The expressions listed in the left-hand column below are defined in, or fall to be construed in accordance with, the provisions of this Ordinance listed in the right-hand column in relation to those expressions. Expression Relevant Provision Application for a standard patent (標準專利的申請) section 3 Corresponding designated patent (相應指定專利) section 4 Corresponding designated patent application (相應指定專利申請) section 4 Deemed date of filing (當作提交日期) section 38 Designated patent (指定專利) section 4 Designated patent application (指定專利申請) section 4 Divisional designated patent application (指定專利的分開申請) section 22(1) Government use (政府徵用) section 69(2) Paris Convention country (巴黎公約國) section 98(6) Patent (專利) section 6(1) Published (發表) section 5 Work (實施) section 6(4) "application for a patent" (專利的申請) "court" (法院) "date of filing" (提交日期) "employee" (僱員) "employer" (僱主) "exclusive licence" (專用特許) "exclusive licensee" (專用特許持有人) and "non-exclusive licence" (非專用特許) "international application" (國際申請) "International Bureau" (國際局) "law of the designated patent office" (指定專利當局的法律) "mortgage" (按揭) "non-prejudicial disclosure" (不具損害性的披露) "opposition or revocation proceedings" (反對或撤銷專利的法律程序) "Paris Convention" (《巴黎公約》) "Paris Convention country" (巴黎公約國) "patent application" (專利申請) "Patent Cooperation Treaty" (《專利合作條約》) "patented invention" (專利發明) "patented process" (專利方法) "patented product" (專利產品) "prescribed" (訂明) "protected layout-design (topography)" (受保護的布圖設計(拓撲圖)) "register" (註冊紀錄冊、註冊) "Registrar" (處長) "Registrar of Patents" (專利註冊處處長) "registry" (註冊處) "request for registration and grant" (註冊與批予請求) "request to record" (記錄請求) "right" (權利) "rules" (規則) "short-term patent" (短期專利) "short-term patent application" (短期專利申請) "specification"' (說明書) "standard patent" (標準專利) "standard patent application" (標準專利申請) "verified copy" (核實副本) "World Trade Organisation Agreement" (《世界貿易組織協議》) "WTO member country, territory or area" (世界貿易組織成員國、地區或地方) PATENTS ORDINANCE - SECT 2 Interpretation VerDate:30/06/1997 (1) In this Ordinance, unless the context otherwise requires- "application for a patent" (專利的申請) means an application for a standard patent or an application for a short-term patent; "court" (法院) means the High Court of Justice; "date of filing" (提交日期)- (a) in relation to a request to record or a request for registration and grant, means the date which is the date of filing that request by virtue of section 17 or 24 respectively; (b) in relation to an application for a standard patent has the meaning specified in relation to that term in section 3(ii); (c) in relation to a designated patent application, means the date specified as such in the designated patent application; "employee" (僱員) means a person who works or (where the employment has ceased) worked under a contract of employment (whether with the Government or with any other person); "employer" (僱主), in relation to an employee, means the person by whom the employee is or was employed; "exclusive licence" (專用特許) means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorized by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application for a patent relates, and "exclusive licensee" (專用特許持有人) and "non-exclusive licence" (非專用特許) shall be construed accordingly; "international application" (國際申請) means an international application for a patent made under the Patent Cooperation Treaty; "International Bureau" (國際局) means the International Bureau of Intellectual Property provided for under the Convention Establishing the World Intellectual Property Organization signed at Stockholm on 14 July 1967; "law of the designated patent office" (指定專利當局的法律) means- (a) in relation to a designated patent office established under the law of any country, territory or area other than Hong Kong, the law of that country, territory or area; (b) in relation to a designated patent office established under an international agreement, the provisions of the international agreement; "mortgage" (按揭) when used as a noun, includes a charge for securing money or money's worth and, when used as a verb, shall be construed accordingly; "non-prejudicial disclosure" (不具損害性的披露) means, in relation to an invention, a disclosure of the invention which is not to be taken into consideration for the purposes of determining whether or not the invention forms part of the state of the art; "opposition or revocation proceedings" (反對或撤銷專利的法律程序) means, in relation to a designated patent, proceedings under the law of the designated patent office providing for the revocation or amendment of the designated patent within a specified period after the grant; "Paris Convention" (《巴黎公約》) means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883; "Paris Convention country" (巴黎公約國) means- (a) any country for the time being specified in Schedule 1 as being a country which has acceded to the Paris Convention; (b) any territory or area subject to the authority or under the suzerainty of any country specified in Schedule 1 pursuant to paragraph (a), or any territory or area administered by any such country, on behalf of which such country has acceded to the Paris Convention; "patent application" (專利申請) has the same meaning as an application for a patent; "Patent Cooperation Treaty" (《專利合作條約》) means the treaty of that name done at Washington on 19 June 1970; "patented invention" (專利發明) means an invention for which a standard patent or, as the case may be, a short-term patent is granted and "patented process" (專利方法) shall be construed accordingly; "patented product" (專利產品) means- (a) a product which is an invention for which a standard patent or a short-term patent (as the case may be) has been granted; (b) in relation to a process for which a standard patent or a short-term patent (as the case may be) has been granted, a product obtained directly by means of the process or to which the process has been applied; "prescribed" (訂明) means prescribed or provided for by rules made under section 149; "protected layout-design (topography)" (受保護的布圖設計(拓撲圖)) has the meaning assigned to that term by section 2(1) of the Layout-design (Topography) of Integrated Circuits Ordinance (Cap 445); "register" (註冊紀錄冊、註冊)- (a) as a noun, means the register of patents kept under section 51; and (b) as a verb, means, in relation to any thing, to register or register particulars, or enter notice of that thing in the register and, in relation to a person, means to enter his name in the register, and cognate expressions shall be construed accordingly; "Registrar" (處長) means the Registrar of Patents; "Registrar of Patents" (專利註冊處處長) means the person holding that office by virtue of the Director of Intellectual Property (Establishment) Ordinance (Cap 412); "registry" (註冊處) means the Patents Registry administered by the Registrar; "request for registration and grant" (註冊與批予請求) means a request under section 23 for the registration of a designated patent and the grant of a standard patent for the invention shown in the published specification of the designated patent; "request to record" (記錄請求) means a request under section 15 to record a designated patent application; "right" (權利), in relation to any patent or patent application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent; "rules" (規則) means rules made by the Registrar under section 149; "short-term patent" (短期專利) means a patent for an invention granted under Part XV; "short-term patent application" (短期專利申請) means an application under Part XV for a short-term patent; "specification"' (說明書), in relation to an application for a patent under this Ordinance, a designated patent application or an international application, means the description, claims and drawings contained in the application; "standard patent" (標準專利) means a patent for an invention granted under Part II; "standard patent application" (標準專利申請) means an application under Part II for a standard patent; "verified copy" (核實副本) means, in relation to a document, a copy verified in the prescribed manner; "World Trade Organisation Agreement" (《世界貿易組織協議》) means the agreement of that name done at Marrakesh in 1994; "WTO member country, territory or area" (世界貿易組織成員國、地區或地方) means any country, territory or area for the time being specified in Schedule 1 as being a country, territory or area which has acceded to the World Trade Organisation Agreement. (2) The expressions listed in the left-hand column below are defined in, or fall to be construed in accordance with, the provisions of this Ordinance listed in the right-hand column in relation to those expressions. Expression Relevant Provision Application for a standard patent (標準專利的申請) section 3 Corresponding designated patent (相應指定專利) section 4 Corresponding designated patent application (相 應 section 4 指定專利申請) Deemed date of filing (當作提交日 期) section 38 Designated patent (指定專 利) section 4 Designated patent application (指定專利申 請) section 4 Divisional designated patent application (指定專 利 section 22(1) 的分開申請) Government use (政府徵 用) section 69(2) Paris Convention country (巴黎公約國) section 98(6) Patent (專 利) section 6(1) Published (發 表) section 5 Work (實 施) section 6(4) "application for a patent" (專利的申請) "court" (法院) "date of filing" (提交日期) "employee" (僱員) "employer" (僱主) "exclusive licence" (專用特許) "exclusive licensee" (專用特許持有人) and "non-exclusive licence" (非專用特許) "international application" (國際申請) "International Bureau" (國際局) "law of the designated patent office" (指定專利當局的法律) "mortgage" (按揭) "non-prejudicial disclosure" (不具損害性的披露) "opposition or revocation proceedings" (反對或撤銷專利的法律程序) "Paris Convention" (《巴黎公約》) "Paris Convention country" (巴黎公約國) "patent application" (專利申請) "Patent Cooperation Treaty" (《專利合作條約》) "patented invention" (專利發明) "patented process" (專利方法) "patented product" (專利產品) "prescribed" (訂明) "protected layout-design (topography)" (受保護的布圖設計(拓撲圖)) "register" (註冊紀錄冊、註冊) "Registrar" (處長) "Registrar of Patents" (專利註冊處處長) "registry" (註冊處) "request for registration and grant" (註冊與批予請求) "request to record" (記錄請求) "right" (權利) "rules" (規則) "short-term patent" (短期專利) "short-term patent application" (短期專利申請) "specification"' (說明書) "standard patent" (標準專利) "standard patent application" (標準專利申請) "verified copy" (核實副本) "World Trade Organisation Agreement" (《世界貿易組織協議》) "WTO member country, territory or area" (世界貿易組織成員國、地區或地方) PATENTS ORDINANCE - SECT 3 Meaning of "application for a standard patent" VerDate:30/06/1997 In this Ordinance, unless the context otherwise requires, reference to an application for a standard patent is a reference to proceedings under Part II- (a) under sections 15 to 22 to record a designated patent application; and <* Note-Exp. x-Ref: Sections 15, 16, 17, 18, 19, 20, 21, 22 *> (b) under sections 23 to 27 for the registration of a designated patent and the grant of a standard patent for the invention shown in the published specification of the designated patent, <* Note-Exp. x-Ref: Sections 23, 24, 25, 26, 27 *> up to but not including the grant of the standard patent, and cognate expressions shall be construed accordingly; and reference to- (i) the filing of an application for a standard patent is a reference to the filing of a request to record; (ii) the date of filing an application for a standard patent is a reference to the date of filing a request to record; (iii) an application for a standard patent as filed is a reference to a request to record as filed; (iv) the publication of an application for a standard patent is a reference to the publication of a request to record; (v) an invention which is the subject of an application for a standard patent, or an invention in respect of which an application for a standard patent has been made, is a reference to the invention disclosed in the specification of the corresponding designated patent or, if no request for registration and grant has been filed in the application, of the designated patent application; (vi) the specification of an application for a standard patent is a reference to the specification of the corresponding designated patent application. PATENTS ORDINANCE - SECT 4 Meaning of "designated patent", etc. VerDate:30/06/1997 (1) In this Ordinance, unless the context otherwise requires- "designated patent" (指定專利) means a patent granted by a designated patent office; "designated patent application" (指定專利申請) means- (a) an application in a designated patent office for a patent, which application has been published under the law of the designated patent office; (b) an international application which has been published and which has validly entered its national phase in a designated patent office; "designated patent office" (指定專利當局) means a patent office designated for the purpose of this Ordinance under section 8. (2) In this Ordinance, unless the context otherwise requires, a reference- (a) to a "corresponding designated patent" in relation to a standard patent, is a reference to the designated patent which was registered under section 27 in an application for the grant of the standard patent; (b) to a "corresponding designated patent application"- (i) in relation to an application for a standard patent for an invention, is a reference to the designated patent application in respect of that invention; (ii) in relation to a standard patent, is a reference to the designated patent application in pursuance of which the corresponding designated patent was granted. "designated patent" (指定專利) "designated patent application" (指定專利申請) "designated patent office" (指定專利當局) "corresponding designated patent" "corresponding designated patent application" PATENTS ORDINANCE - SECT 5 Meaning of "published" VerDate:30/06/1997 (1) In this Ordinance, unless the context otherwise requires- (a) "published" (發表) means made available to the public (whether in Hong Kong or elsewhere); and (b) a document shall be taken to be published under any provision of this Ordinance if it can be inspected as of right at any place in Hong Kong by members of the public, whether on payment of a fee or not. (2) Without prejudice to subsection (1), and unless the context otherwise requires, a reference in this Ordinance- (a) to the grant of a standard patent being published is a reference to its being published under section 27; (b) to a request to record being published is a reference to its being published under section 20; (c) to a designated patent being published is a reference to its being published by the designated patent office by which the patent was granted for the purposes of the law of that office relating to applications for and the granting of patents; (d) to a designated patent application being published is a reference- (i) except as provided in subparagraph (ii), to its being published by the designated patent office in which the application was made; (ii) in the case of a designated patent application based on an international application, to the international application being published by the International Bureau under the Patent Cooperation Treaty, or by the designated patent office in which the application was made, whichever is the earlier; (e) to a short-term patent being published is a reference to its being published under section 118. "published" (發表) PATENTS ORDINANCE - SECT 6 Other references VerDate:30/06/1997 (1) Unless the context otherwise requires, a reference in this Ordinance to a patent is a reference to a standard patent or a short-term patent granted under this Ordinance. (2) Unless the context otherwise requires, a reference in this Ordinance to an international agreement is a reference to- (a) the agreement, or any other international agreement replacing it, as may from time to time be amended or supplemented by or in accordance with any international agreement (including any protocol or annex); (b) any instrument made under any such agreement to provide for amendment to or supplementation of the agreement. (3) Unless the context otherwise requires, a reference in this Ordinance to an enactment or law of a country, territory or area other than Hong Kong shall be construed as a reference to that enactment or law as it may from time to time be amended or extended by or under any other enactment or law of the country, territory or area. (4) Unless the context otherwise requires, a reference in this Ordinance to an invention being worked in Hong Kong includes a reference to the invention being worked by importation into Hong Kong for the purpose of putting the patented product on the market or stocking it for that purpose. (5) For the purposes of this Ordinance matter shall be taken to have been disclosed in any designated patent application or in the specification of a patent or a designated patent if it was either claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in any such application or specification. [cf. 1977 c. 37 s. 130(3) U.K.] PATENTS ORDINANCE - SECT 7 Provisions regarding filing of documents, etc. VerDate:30/06/1997 In this Ordinance, unless the context otherwise requires, a reference providing for the filing of any document with the Registrar shall be deemed to include a reference requiring the payment of any fee that may be prescribed for the filing of that document, and a document shall be deemed not to be duly filed for the purposes of this Ordinance unless any such fee as may be prescribed for the filing of the document is paid as so prescribed. PATENTS ORDINANCE - SECT 8 Designation of patent offices VerDate:01/07/1997 Amendments retroactively made - see 22 of 1999 s. 3 The Chief Executive in Council may for the purposes of this Ordinance by notice published in the Gazette designate a patent office established under the law of any country, territory or area other than Hong Kong or established under any international agreement. (Amended 22 of 1999 s. 3) PATENTS ORDINANCE - SECT 8 Designation of patent offices VerDate:30/06/1997 The Governor in Council may for the purposes of this Ordinance by notice published in the Gazette designate a patent office established under the law of any country, territory or area other than Hong Kong or established under any international agreement. PATENTS ORDINANCE - SECT 9 Special provision regarding invention covered by 2 or more patents VerDate:22/02/2008 Where there are in effect 2 or more patents for the same invention, any use of the invention which does not constitute an infringement of any one such patent (whether by virtue of consent given by the proprietor, a compulsory licence having effect under Part VIII, the provisions of Part IX relating to Government use, an import compulsory licence having effect under Part IXA or an export compulsory licence having effect under Part IXB) shall not constitute an infringement of the other such patent. (Amended 21 of 2007 s. 4) PATENTS ORDINANCE - SECT 9 Special provision regarding invention covered by 2 or more patents VerDate:30/06/1997 Where there are in effect 2 or more patents for the same invention, any use of the invention which does not constitute an infringement of any one such patent (whether by virtue of consent given by the proprietor, a compulsory licence having effect under Part VIII or the provisions of Part IX relating to Government use) shall not constitute an infringement of the other such patent. PATENTS ORDINANCE - SECT 10 General provision regarding applications for standard patents VerDate:30/06/1997 PART II APPLICATIONS FOR STANDARD PATENTS Introduction This Part shall be construed as providing for the grant of a standard patent for an invention in the following circumstances, and only in those circumstances, namely where- (a) an application for a patent for that invention has been filed in and published by a designated patent office (and in this Ordinance a patent application so filed and published is referred to as a "designated patent application"); (b) as the first stage of an application for a standard patent, the designated patent application has been recorded in the register and published in Hong Kong in accordance with sections 15 to 22; <* Note-Exp. x-Ref: Sections 15, 16, 17, 18, 19, 20, 21, 22 *> (c) a patent has been granted in the designated patent office in pursuance of the designated patent application (and in this Ordinance such a patent is referred to as a "designated patent"); and (d) as the second stage of the application for a standard patent, the designated patent has been registered in accordance with sections 23 to 27. <* Note-Exp. x-Ref: Sections 23, 24, 25, 26, 27 *> PATENTS ORDINANCE - SECT 11 Formality examination of applications for standard patent VerDate:30/06/1997 Except as expressly provided to the contrary, nothing in this Part providing for the examination by the Registrar of an application for a standard patent for an invention shall be construed as imposing upon the Registrar any obligation to consider or to have regard to, for the purpose of such examination, any question as to- (a) the patentability of the invention; (b) whether the applicant is entitled to any priority claimed in the application; (c) whether the invention is properly disclosed in the application; or (d) whether any requirement under sections 45, 77, 78, 79, 93, 94, 95, 96, 97, 98, 99 or 100 has been complied with. PATENTS ORDINANCE - SECT 12 Who may apply VerDate:30/06/1997 Right to apply (1) The person who may apply for the grant of a standard patent for an invention is- (a) the person named as applicant in a designated patent application for a patent for the invention, or his successor in title to the rights under the designated patent application in Hong Kong; or (b) in preference to the person mentioned in paragraph (a), the person who is entitled to the property in the invention in Hong Kong. (2) Subject to any determination under section 13, the applicant for a standard patent for an invention in proceedings before the Registrar shall for the purpose of those proceedings be deemed to be the person entitled to apply for the grant of a patent for that invention under subsection (1). [cf. 1977 c. 37 s. 7 U.K.] PATENTS ORDINANCE - SECT 13 Determination before grant of questions as to who may apply VerDate:30/06/1997 (1) At any time before a standard patent has been granted for an invention (whether or not an application has been made for a standard patent for the invention)- (a) any person may refer to the Registrar or the court the question of whether he is entitled under section 12 (alone or with other persons) to apply for the grant of a standard patent for the invention; or (b) any of 2 or more joint proprietors of an application for a patent for that invention may so refer the question whether any right in or under the application should be transferred or granted to any other person. (2) The Registrar or the court may make such order as he or it thinks fit to give effect to a determination under this section. (3) Where a question is referred to the Registrar or the court under this section after an application for a standard patent has been filed but before a standard patent is granted in pursuance of the application then the Registrar or the court may, unless the application is withdrawn before the reference is disposed of by the Registrar or the court- (a) order that the application for a standard patent shall proceed in the name of that person, either solely or jointly with that of any other applicant, instead of in the name of the applicant or any specified applicant; (b) where the reference was made by 2 or more persons, order that the application shall proceed in all their names jointly; or (c) make an order transferring or granting any licence or other right in or under the application and give directions to any person for carrying out the provisions of any such order. (4) Where a person refers a question under subsection (1)(b) relating to an application, any order under subsection (2) may contain directions to any person for transferring or granting any right in or under the application. (5) If any person to whom directions have been given under subsection (3)(c) or (4) fails to do anything necessary for carrying out any such directions within 14 days after the date of the directions, the Registrar or the court may on application made to him or it by any person in whose favour or on whose reference the directions were given authorize him to do that thing on behalf of the person to whom the directions were given. (6) No order shall be made under subsection (3) unless notice of such reference is given in the prescribed manner to- (a) the applicant for the standard patent (not being a party to the reference); or (b) any other person (not being a party to the reference) who it is alleged in the reference has the right, by virtue of any transaction, instrument or event relating to the invention or the application, to apply for the grant of the standard patent whether alone or with any other person, and any person receiving such notice may oppose the reference. (7) No directions shall be given under this section so as to affect the mutual rights or obligations of trustees or of the personal representatives of deceased persons, or their rights or obligations as such. [cf. 1977 c. 37 s. 8 U.K.] PATENTS ORDINANCE - SECT 14 Effect of transfer of application under section 13 VerDate:30/06/1997 (1) Where an order is made or directions are given under section 13 that an application for a standard patent shall proceed in the name of one or some of the original applicants (whether or not it is also to proceed in the name of some other person), any licences or other rights in or under the application shall, subject to the order and any directions under that section, continue in force and be treated as granted by the persons in whose name the application is to proceed. (2) Where an order is made or directions are given under section 13 that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant (on the ground that the original applicant or applicants was or were not entitled to apply under section 12 for the grant of the patent), any licences or other rights in or under the application for a standard patent shall, subject to the order and any directions under that section and subject to subsection (3), lapse on the registration of that person or those persons as the applicant or applicants or, where the application for a standard patent has not been published, on the making of the order. (3) If before a reference to the Registrar or the court under section 13 resulting in the making of any order mentioned in subsection (2)- (a) the original applicant or any of the applicants, acting in good faith, worked the invention in question in Hong Kong or made effective and serious preparations to do so; or (b) a licensee of the applicant, acting in good faith, worked the invention in Hong Kong or made effective and serious preparations to do so, that or those original applicant or applicants or the licensee shall, on making a request within the prescribed period to the person in whose name the application is to proceed, be entitled to be granted a licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention. (4) Any such licence shall be granted for a reasonable period and on reasonable terms. (5) Where an order is made as mentioned in subsection (2), the person in whose name the application is to proceed or any person claiming that he is entitled to be granted any such licence may refer to the Registrar or the court the question whether the latter is so entitled and whether any such period is or terms are reasonable, and the Registrar or the court, as appropriate, shall determine the question and may, if he or it considers it appropriate, order the grant of such a licence. (6) The Registrar or the court may make such order as he or it thinks fit to give effect to a determination under subsection (5). [cf. 1977 c. 37 s. 11 U.K.] PATENTS ORDINANCE - SECT 15 Filing of request to record VerDate:01/06/2002 Request to record a designated patent application (1) A person entitled under section 12(1) to apply for the grant of a standard patent for an invention may, at any time within 6 months after the date of publication of an application in a designated patent office for a patent for the invention, request the Registrar to enter a record of that designated patent application in the register (in this Ordinance referred to as a "request to record"). (2) Every such request shall be signed by the applicant and be filed with the Registrar in the prescribed manner and shall contain- (a) a photocopy of the designated patent application as published, that is to say, including any description, claims, drawings, search report or abstract published together with the designated patent application; (b) where the designated patent application does not contain the name of any person as being the inventor, a statement identifying the person or persons whom the applicant believes to be the inventor or inventors; (c) the name and address of the person making the request; (d) where the person filing the request is a person other than the person named as applicant in the designated patent application, a statement explaining his entitlement to apply for the grant of a standard patent for the invention and prescribed documents supporting that statement; (e) where priority is claimed under section 98 in respect of a right of priority enjoyed in the designated patent office on the basis of an earlier application as mentioned in that section, a statement that indicates the details of- (Amended 2 of 2001 s. 3) (i) the date of priority claimed; (ii) the country in which the earlier application was filed; (f) where at the time of filing the designated patent application a claim was made in accordance with the law of the designated patent office in respect of any previous disclosure of the invention that was, for the purposes of the law of the designated patent office, a non-prejudicial disclosure, a statement that indicates the prescribed details relating to the previous disclosure; and (Amended 2 of 2001 s. 3) (g) an address in Hong Kong for service of documents. (3) Every such request shall also comply with the requirements of this Ordinance as to the provision of information in, or the translation of documents into, one or both official languages. (4) A filing fee and an advertisement fee shall be payable within 1 month after the earliest filing with the Registrar of any part of the request to record, and if either fee is not paid within that period or within such further period as may be allowed under subsection (5) the application for a standard patent shall be deemed to be withdrawn. (5) Rules may provide for a period of grace within which a filing fee or advertisement fee that has not been paid within the time limit specified in subsection (4) may still be validly paid. (6) Subsection (1) shall not apply in respect of a designated patent application published before the date on which the designated patent office was designated under section 8. (7) Nothing in this section shall preclude a request to record being initiated by documents complying with section 17. [cf. EPC Art. 78; 1977 c. 37 s. 14 U.K.] PATENTS ORDINANCE - SECT 15 Filing of request to record VerDate:30/06/1997 Request to record a designated patent application (1) A person entitled under section 12(1) to apply for the grant of a standard patent for an invention may, at any time within 6 months after the date of publication of an application in a designated patent office for a patent for the invention, request the Registrar to enter a record of that designated patent application in the register (in this Ordinance referred to as a "request to record"). (2) Every such request shall be signed by the applicant and be filed with the Registrar in the prescribed manner and shall contain- (a) a photocopy of the designated patent application as published, that is to say, including any description, claims, drawings, search report or abstract published together with the designated patent application; (b) where the designated patent application does not contain the name of any person as being the inventor, a statement identifying the person or persons whom the applicant believes to be the inventor or inventors; (c) the name and address of the person making the request; (d) where the person filing the request is a person other than the person named as applicant in the designated patent application, a statement explaining his entitlement to apply for the grant of a standard patent for the invention and prescribed documents supporting that statement; (e) a statement indicating whether or not priority is claimed under section 98 in respect of a right of priority enjoyed in the designated patent office on the basis of an earlier application as mentioned in that section and, where the statement indicates that priority is so claimed, details of- (i) the date of priority claimed; (ii) the country in which the earlier application was filed; (f) a statement indicating whether or not at the time of filing the designated patent application a claim was made in accordance with the law of the designated patent office in respect of any previous disclosure of the invention that was, for the purposes of the law of the designated patent office, a non-prejudicial disclosure and, if the statement indicates that such a claim was made, prescribed details relating to such previous disclosure; and (g) an address in Hong Kong for service of documents. (3) Every such request shall also comply with the requirements of this Ordinance as to the provision of information in, or the translation of documents into, one or both official languages. (4) A filing fee and an advertisement fee shall be payable within 1 month after the earliest filing with the Registrar of any part of the request to record, and if either fee is not paid within that period or within such further period as may be allowed under subsection (5) the application for a standard patent shall be deemed to be withdrawn. (5) Rules may provide for a period of grace within which a filing fee or advertisement fee that has not been paid within the time limit specified in subsection (4) may still be validly paid. (6) Subsection (1) shall not apply in respect of a designated patent application published before the date on which the designated patent office was designated under section 8. (7) Nothing in this section shall preclude a request to record being initiated by documents complying with section 17. [cf. EPC Art. 78; 1977 c. 37 s. 14 U.K.] PATENTS ORDINANCE - SECT 16 Designated patent application based on international application VerDate:01/06/2002 Where a designated patent application is the national phase of an international application under the Patent Cooperation Treaty, then- (a) for the purposes of section 15(1), and notwithstanding section 5(2)(d)(ii), the date of publication of the designated patent application shall be- (i) the date of such publication in the designated patent office as serves to indicate that the international application has validly entered its national phase in the designated patent office; or (ii) such other date as may be prescribed in rules, being a date not earlier than the date on which the international application has validly entered its national phase in the designated patent office; (b) reference in section 15(2)(a) to a photocopy of the designated patent application shall be read as reference to- (i) a photocopy of the international application as published by the International Bureau; (ii) a photocopy of any translation of the international application published by the designated patent office; and (iii) a photocopy of any publication of information in the designated patent office concerning the international application; (c) (Repealed 2 of 2001 s. 4) (d) section 17(1)(c) shall have effect in such manner as may be specified in rules made for the purposes of this section. PATENTS ORDINANCE - SECT 16 Designated patent application based on international application VerDate:30/06/1997 Where a designated patent application is the national phase of an international application under the Patent Cooperation Treaty, then- (a) for the purposes of section 15(1), and notwithstanding section 5(2)(d)(ii), the date of publication of the designated patent application shall be- (i) the date of such publication in the designated patent office as serves to indicate that the international application has validly entered its national phase in the designated patent office; or (ii) such other date as may be prescribed in rules, being a date not earlier than the date on which the international application has validly entered its national phase in the designated patent office; (b) reference in section 15(2)(a) to a photocopy of the designated patent application shall be read as reference to- (i) a photocopy of the international application as published by the International Bureau; (ii) a photocopy of any translation of the international application published by the designated patent office; and (iii) a photocopy of any publication of information in the designated patent office concerning the international application; (c) the statement required for the purposes of section 15(2)(e) shall be a statement indicating whether or not priority is claimed under section 98, and if claimed whether so claimed on the basis of a right of priority claimed in the designated patent office, or claimed in the international application and accepted in the designated patent office, and mentioned in the corresponding designated patent application; (d) section 17(1)(c) shall have effect in such manner as may be specified in rules made for the purposes of this section. PATENTS ORDINANCE - SECT 17 Date of filing of request to record VerDate:01/06/2002 (1) Subject to subsection (2) and section 18(3), the date of filing a request to record shall be the earliest date on which documents filed by the applicant contain- (a) an indication that a request is made to record a designated patent application; (b) information identifying the applicant; and (c) a reference to the designated patent application, including- (i) the application number assigned to it by the designated patent office; and (ii) the publication number (if any) assigned to it by the designated patent office, and the date (if any) of its publication by the designated patent office. (Amended 2 of 2001 s. 5) (2) If the earliest filing with the Registrar of any part of a request to record occurs more than 6 months after the publication of the corresponding designated patent application the request shall not be dealt with as an application for a standard patent. [cf. EPC Art. 80] PATENTS ORDINANCE - SECT 17 Date of filing of request to record VerDate:30/06/1997 (1) Subject to subsection (2) and section 18(3), the date of filing a request to record shall be the earliest date on which documents filed by the applicant contain- (a) an indication that a request is made to record a designated patent application; (b) information identifying the applicant; and (c) a reference to the designated patent application, including- (i) the application number assigned to it by the designated patent office; and (ii) the publication number assigned to it by the designated patent office, and the date of its publication by the designated patent office. (2) If the earliest filing with the Registrar of any part of a request to record occurs more than 6 months after the publication of the corresponding designated patent application the request shall not be dealt with as an application for a standard patent. [cf. EPC Art. 80] PATENTS ORDINANCE - SECT 18 Examination on filing of request to record VerDate:30/06/1997 (1) The Registrar shall examine whether- (a) the request to record satisfies the requirements of section 17(1) for the accordance of a date of filing (the "minimum requirements"); (b) the filing fee and advertisement fee have been paid in due time. (2) Subject to section 17(2), if a date of filing cannot be accorded because of deficiencies as regards the minimum requirements, the Registrar shall give the applicant an opportunity to correct the deficiencies in accordance with the rules. (3) If such deficiencies are not corrected within the prescribed time, the request shall not be dealt with as an application for a standard patent. [cf. EPC Art. 90] PATENTS ORDINANCE - SECT 19 Examination as to formal requirements of request to record VerDate:30/06/1997 (1) If a request to record has been accorded a date of filing and is not deemed to be withdrawn by virtue of section 15(4), the Registrar shall examine whether the requirements of section 15(2) and (3) ("the formal requirements") have been satisfied. (2) Where the Registrar notes that there are deficiencies as regards the formal requirements which may be corrected, he shall give the applicant an opportunity to correct them in accordance with the rules. (3) If- (a) there are deficiencies as regards the formal requirements which cannot be corrected the application for a standard patent shall be refused; (b) any deficiencies as regards the formal requirements noted in the examination are not corrected in accordance with the rules then, except as provided in subsection (4), the application for a standard patent shall be refused or, if no steps are taken to correct the deficiencies, shall be deemed to be withdrawn. (4) If a deficiency relating solely to a claim to any right of priority is not duly corrected, such right shall be lost for the application. [cf. EPC Art. 91] PATENTS ORDINANCE - SECT 20 Publication of request to record VerDate:07/05/2004 (1) If on an examination under section 19(1) a request to record is found to have satisfied the requirements of section 15(2) and (3), or if on a subsequent examination by the Registrar the deficiencies noted under section 19(2) are found to have been corrected in accordance with the rules, then the Registrar shall as soon as practicable after such examination, but subject to this section and section 37- (a) record the designated patent application in the register and enter particulars of the request to record in the register; (b) publish the request to record in the prescribed manner; (c) advertise the fact of such publication and entry by notice in the official journal; and (Amended 2 of 2001 s. 6; 2 of 2001 s. 14) (d) inform the applicant of the publication of the request to record. (2) A request to record shall not be published if- (a) before the completion of preparations for publication, it has been finally refused or withdrawn or has been deemed to have been withdrawn; or (b) the filing fee or advertisement fee has not been paid. (3) For the purposes of subsection (1)(b) the request to record shall include- (a) the designated patent application, including the description, the claims, any drawings and any search report or abstract published by the designated patent office and filed in the request to record; (b) the names of the proprietor and (if different) the inventor. PATENTS ORDINANCE - SECT 20 Publication of request to record VerDate:01/06/2002 (1) If on an examination under section 19(1) a request to record is found to have satisfied the requirements of section 15(2) and (3), or if on a subsequent examination by the Registrar the deficiencies noted under section 19(2) are found to have been corrected in accordance with the rules, then the Registrar shall as soon as practicable after such examination, but subject to this section and section 37- (a) record the designated patent application in the register and enter particulars of the request to record in the register; (b) publish the request to record in the prescribed manner; (c) advertise the fact of such publication and entry by notice in the Gazette; and (Amended 2 of 2001 s. 6) (d) inform the applicant of the publication of the request to record. (2) A request to record shall not be published if- (a) before the completion of preparations for publication, it has been finally refused or withdrawn or has been deemed to have been withdrawn; or (b) the filing fee or advertisement fee has not been paid. (3) For the purposes of subsection (1)(b) the request to record shall include- (a) the designated patent application, including the description, the claims, any drawings and any search report or abstract published by the designated patent office and filed in the request to record; (b) the names of the proprietor and (if different) the inventor. PATENTS ORDINANCE - SECT 20 Publication of request to record VerDate:30/06/1997 (1) If on an examination under section 19(1) a request to record is found to have satisfied the requirements of section 15(2) and (3), or if on a subsequent examination by the Registrar the deficiencies noted under section 19(2) are found to have been corrected in accordance with the rules, then the Registrar shall as soon as practicable after such examination, but subject to this section and section 37- (a) record the designated patent application in the register and enter particulars of the request to record in the register; (b) publish the request to record in the prescribed manner; (c) advertise the fact of such publication and entry by notice in the Gazette; (d) inform the applicant of the publication of the request to record. (2) A request to record shall not be published if- (a) before the completion of preparations for publication, it has been finally refused or withdrawn or has been deemed to have been withdrawn; or (b) the filing fee or advertisement fee has not been paid. (3) For the purposes of subsection (1)(b) the request to record shall include- (a) the designated patent application, including the description, the claims, any drawings and any search report or abstract published by the designated patent office and filed in the request to record; (b) the names of the proprietor and (if different) the inventor. PATENTS ORDINANCE - SECT 21 Registrar may publish additional matters VerDate:30/06/1997 In publishing a request to record under section 20(1)(b), the Registrar may publish such matters constituting or relating to the request which in the Registrar's opinion it is desirable to publish in addition to the matters specified in section 20(3). PATENTS ORDINANCE - SECT 22 Provision for request to record in the event of a divisional designated patent application VerDate:30/06/1997 (1) Where in an application for a standard patent- (a) a request to record has been published under section 20 and has not been refused, withdrawn or deemed to be withdrawn; and (b) the applicant for the corresponding designated patent application or his successor in title has filed in the designated patent office a divisional patent application ("a divisional corresponding designated patent application"), that is to say, an application for a patent which- (i) is in respect of the same subject-matter and does not extend beyond the contents of the corresponding designated patent application as filed in the designated patent office; (ii) has as its date of filing the date of filing of the corresponding designated patent application; and (iii) enjoys the same benefit of any right of priority as the corresponding designated patent application, the applicant may within 6 months after the date of publication of the divisional designated patent application or publication of the request to record under this Ordinance, whichever is the later, request the Registrar to enter a record of that divisional designated patent application in the register. (2) Where a request to record a divisional designated patent application is filed under this section- (a) it shall be deemed to have been filed on the date of filing of the earlier request to record and the application for a standard patent shall have the benefit of any right of priority; (b) subject to paragraph (a), the provisions of this Ordinance shall apply to such a request as they apply to a request to record filed under section 15(1). (3) For the purpose of the application of the other provisions of this Ordinance to this section- (a) any reference in those other provisions to a corresponding designated patent application shall be read as a reference to the divisional designated patent application mentioned in subsection (1)(b); (b) any reference in those other provisions to a corresponding designated patent shall be read as a reference to the designated patent granted in pursuance of the divisional designated patent application. [cf. EPC Art. 76; 1992 No. 1 s. 24 Eire; 1977 c. 37 s. 15 U.K.] PATENTS ORDINANCE - SECT 23 Filing of request for registration and grant VerDate:30/06/1997 Request for registration and grant (1) Where in an application for a standard patent- (a) a designated patent application has been recorded in the register and a request to record has been published and the request to record is not refused or deemed withdrawn or abandoned (whether under this Part or Part III); and (b) a patent has been granted in the designated patent office in pursuance of the designated patent application, the applicant or his successor in title may, subject to subsection (2), request the Registrar to register the designated patent so granted and to grant a standard patent for the invention shown in the published specification of the designated patent (in this Ordinance referred to as a "request for registration and grant"). (2) A request for registration and grant under subsection (1) shall be made within 6 months after the date of grant of the designated patent by the designated patent office or publication of the request to record, whichever is the later. (3) Every such request shall be filed with the Registrar in the prescribed manner and shall contain- (a) a verified copy of the published specification of the designated patent, including the description, the claims and any drawings published by the designated patent office; (b) if the person filing the request is a person other than the person named in the register as the applicant for a standard patent for the invention, a statement explaining the first-mentioned person's entitlement to apply for the grant of a standard patent for the invention and prescribed documents supporting that statement; (c) where the request to record contains a statement under section 15(2)(e) to the effect that priority is claimed on the basis of a right of priority claimed in the designated patent office, such copies as may be prescribed of the documents filed in the designated patent office claiming and supporting such right of priority. (4) Every such request shall also comply with the requirements of this Ordinance as to the provision of information in, or the translation of documents into, one or both official languages. (5) A filing fee and an advertisement fee shall be payable within 1 month after the earliest filing of a part of the request for registration and grant, and if either fee is not paid within that period or within such further period as may be allowed under subsection (6) the application for a patent shall be deemed to be withdrawn. (6) Rules may provide for a period of grace within which a filing fee or advertisement fee that has not been paid within the time limit specified in subsection (5) may still be validly paid. (7) Nothing in this section shall preclude a request for registration and grant being initiated in accordance with section 24. PATENTS ORDINANCE - SECT 24 Date of filing request for registration and grant VerDate:30/06/1997 (1) Subject to subsection (2) and section 25(3), the date of filing of a request for registration and grant shall be the earliest date on which documents filed by the applicant contain- (a) an indication that a request is made for the registration of a designated patent and the grant of a standard patent; (b) information identifying the applicant; (c) the publication number assigned to the designated patent by the designated patent office, and the date of its publication; and (d) the publication number assigned to the request to record by the Registrar. (2) If the earliest filing with the Registrar of any part of a request for registration and grant occurred more than 6 months after the later of- (a) the date of grant of the designated patent; and (b) publication of the request to record in accordance with section 20, then the application shall be deemed to be withdrawn. PATENTS ORDINANCE - SECT 25 Examination on filing of request for registration and grant VerDate:30/06/1997 (1) The Registrar shall examine whether- (a) the request for registration and grant satisfies the requirements of section 24(1) for the accordance of a date of filing; and (b) the filing fee and advertisement fee have been paid in due time. (2) Subject to section 24(2), if on examination under subsection (1)(a) a date of filing cannot be accorded because of deficiencies as regards the requirements mentioned in subsection (1)(a), the Registrar shall give the applicant an opportunity to correct the deficiencies in accordance with the rules. (3) If- (a) there are deficiencies as regards the requirements specified in section 24(1) which cannot be corrected the application for a standard patent shall be refused; (b) any deficiencies as regards those requirements noted in the examination under subsection (1) are not corrected in accordance with the rules, the application for a standard patent shall be refused or, if no steps are taken to correct the deficiencies, shall be deemed to be withdrawn. PATENTS ORDINANCE - SECT 26 Examination as to formal requirements of the request for registration and grant VerDate:30/06/1997 (1) If a request for registration and grant has been accorded a date of filing and is not deemed to be withdrawn by virtue of section 23(5), the Registrar shall examine whether the requirements of section 23(3) and (4) ("the formal requirements") have been satisfied. (2) Where the Registrar notes that there are deficiencies as regards the formal requirements which may be corrected, he shall give the applicant an opportunity to correct them in accordance with the rules. (3) If- (a) there are deficiencies as regards the formal requirements which cannot be corrected the application for a standard patent shall be refused; (b) any deficiencies as regards the formal requirements noted in the examination are not corrected in accordance with the rules then, except as provided in subsection (4), the application for a standard patent shall be refused or, if no steps are taken to correct the deficiencies, shall be deemed to be withdrawn. (4) If a deficiency relating solely to a claim to any right of priority is not duly corrected then such right shall be lost for the application. [cf. EPC Art. 91] PATENTS ORDINANCE - SECT 27 Registration of designated patent and grant of patent VerDate:07/05/2004 (1) If on examination under section 26(1) a request for registration and grant is found to have satisfied the requirements of section 23(3) and (4) or if on a subsequent examination the deficiencies noted under section 26(2) are found to have been corrected in accordance with the rules, then the Registrar shall as soon as practicable after such examination, but subject to section 37- (a) register the designated patent by making an appropriate entry in the register; and (b) grant a standard patent for the invention shown in the published specification of the designated patent as filed under section 23(3)(a) and issue a certificate to that effect. (2) A patent shall not be granted under this section unless the filing fee and advertisement fee specified in section 23 and any other fees payable under the preceding provisions of this Part have been paid. (3) As soon as practicable after a standard patent has been granted under this section the Registrar shall- (a) publish in the prescribed manner the specification of the patent, the names of the proprietor and, if different, the inventor; (b) send the certificate issued under subsection (1)(b) to the proprietor; and (c) advertise the fact of such grant by notice in the official journal. (Amended 2 of 2001 s. 14) (4) In publishing under subsection (3)(a) any matters specified in that subsection, the Registrar may publish in addition such other matters constituting or relating to the patent which in his opinion it is desirable to publish. PATENTS ORDINANCE - SECT 27 Registration of designated patent and grant of patent VerDate:30/06/1997 (1) If on examination under section 26(1) a request for registration and grant is found to have satisfied the requirements of section 23(3) and (4) or if on a subsequent examination the deficiencies noted under section 26(2) are found to have been corrected in accordance with the rules, then the Registrar shall as soon as practicable after such examination, but subject to section 37- (a) register the designated patent by making an appropriate entry in the register; and (b) grant a standard patent for the invention shown in the published specification of the designated patent as filed under section 23(3)(a) and issue a certificate to that effect. (2) A patent shall not be granted under this section unless the filing fee and advertisement fee specified in section 23 and any other fees payable under the preceding provisions of this Part have been paid. (3) As soon as practicable after a standard patent has been granted under this section the Registrar shall- (a) publish in the prescribed manner the specification of the patent, the names of the proprietor and, if different, the inventor; (b) send the certificate issued under subsection (1)(b) to the proprietor; and (c) advertise the fact of such grant by notice in the Gazette. (4) In publishing under subsection (3)(a) any matters specified in that subsection, the Registrar may publish in addition such other matters constituting or relating to the patent which in his opinion it is desirable to publish. PATENTS ORDINANCE - SECT 28 Further processing of application for standard patent VerDate:30/06/1997 Further processing; restoration of rights (1) Subject to this section, where- (a) an application for a standard patent, or any part of an application, is refused or is deemed withdrawn following the applicant's failure to comply with a time limit under this Part (including any time limit set by the Registrar); and (b) the applicant has by notice filed with the Registrar requested reinstatement of the application or part of the application, then the legal consequence of the failure to comply with the time limit, as provided under the Ordinance, shall not ensue or, if it has already ensued, shall be retracted. (2) A notice under this section- (a) shall be in writing and shall be filed within 2 months after such refusal or deemed withdrawal; (b) shall not be deemed to be filed unless the additional prescribed fee has been paid; and (c) shall not be deemed to be filed unless the omission which constituted the failure to comply with a time limit has been made good. (3) This section does not apply in the case of the refusal or deemed withdrawal of an application under section 15(4), 23(5), 24(2) or 25(3). (4) The Registrar may by regulation amend the period specified in subsection (2)(a) within which a notice under this section shall be filed. [cf. EPC Art. 121] PATENTS ORDINANCE - SECT 29 Restoration of rights VerDate:07/05/2004 (1) Subject to this section, where- (a) an applicant for a standard patent has failed to comply with a time limit under this Part (including any time limit set by the Registrar); and (b) the Registrar is satisfied that the failure to comply with the time limit occurred in spite of the applicant having taken all reasonable care required by the circumstances, then upon application by the applicant to the Registrar under this section for restoration of his rights lost- (i) any refusal or deemed withdrawal of the application that occurred as a direct consequence of the failure to comply with the time limit shall be deemed to be of no effect and the application shall be treated for the purposes of proceedings under this Part as if there had been no such failure; (ii) any right or means of redress lost by the applicant as a direct consequence of the failure to comply with the time limit shall be restored to the applicant. (2) An application under this section- (a) shall be in writing and shall be made not later than- (i) 1 year after the expiry of the time limit referred to in subsection (1)(a); or (ii) 2 months after the removal of the cause of non-compliance with the time limit, whichever is the earlier; (b) shall not be deemed to be filed unless the additional prescribed fee has been paid; and (c) shall not be deemed to be made unless the omission which constituted the failure to comply with a time limit has been made good. (3) Where prior to the refusal or deemed withdrawal of the application mentioned in subsection (1)(i) the request to record had been published under section 20, the Registrar shall advertise in the official journal notice of any application under subsection (1). (Amended 2 of 2001 s. 14) (4) The Registrar may by regulation amend the periods specified in subsection (2)(a) within which a notice under this section shall be filed. (5) This section does not apply to any failure to comply with a time limit under section 15 (except as regards any time limit specified for the purposes of section 15(3)), 17(2), 18, 19, 22, 23(5), 24(2) or 25(3). [cf. EPC Art. 122] PATENTS ORDINANCE - SECT 29 Restoration of rights VerDate:30/06/1997 (1) Subject to this section, where- (a) an applicant for a standard patent has failed to comply with a time limit under this Part (including any time limit set by the Registrar); and (b) the Registrar is satisfied that the failure to comply with the time limit occurred in spite of the applicant having taken all reasonable care required by the circumstances, then upon application by the applicant to the Registrar under this section for restoration of his rights lost- (i) any refusal or deemed withdrawal of the application that occurred as a direct consequence of the failure to comply with the time limit shall be deemed to be of no effect and the application shall be treated for the purposes of proceedings under this Part as if there had been no such failure; (ii) any right or means of redress lost by the applicant as a direct consequence of the failure to comply with the time limit shall be restored to the applicant. (2) An application under this section- (a) shall be in writing and shall be made not later than- (i) 1 year after the expiry of the time limit referred to in subsection (1)(a); or (ii) 2 months after the removal of the cause of non-compliance with the time limit, whichever is the earlier; (b) shall not be deemed to be filed unless the additional prescribed fee has been paid; and (c) shall not be deemed to be made unless the omission which constituted the failure to comply with a time limit has been made good. (3) Where prior to the refusal or deemed withdrawal of the application mentioned in subsection (1)(i) the request to record had been published under section 20, the Registrar shall advertise in the Gazette notice of any application under subsection (1). (4) The Registrar may by regulation amend the periods specified in subsection (2)(a) within which a notice under this section shall be filed. (5) This section does not apply to any failure to comply with a time limit under section 15 (except as regards any time limit specified for the purposes of section 15(3)), 17(2), 18, 19, 22, 23(5), 24(2) or 25(3). [cf. EPC Art. 122] PATENTS ORDINANCE - SECT 30 Effect of restoration of rights under section 29 VerDate:07/05/2004 (1) The effect of a restoration under section 29 is as follows. (2) A person who, during the period between the loss of rights referred to in section 29(1) and the advertisement in the official journal of notice of the application for restoration under section 29(3)- (Amended 2 of 2001 s. 14) (a) does in good faith an act which would constitute an infringement of the applicant's rights under the published application for a standard patent if those rights had not been lost; or (b) makes in good faith effective and serious preparations to do such an act, has the rights specified in subsection (3). (3) The rights referred to in subsection (2) are- (a) the right to continue to do or, as the case may be, to do the act referred to in subsection (2); (b) if such act was done or preparations had been made to do it in the course of a business- (i) in the case of an individual- (A) the right to assign the right to do it or to transmit such right on death; or (B) the right to authorize the doing of that act by any of his partners for the time being in the business in the course of which the act was done or preparations had been made to do it; (ii) in the case of a body corporate, the right to assign the right to do it or to transmit such right on the body's dissolution, and the doing of that act by virtue of this subsection shall not amount to an infringement of the applicant's rights under the published application for a patent concerned. (4) The rights specified in subsection (3) shall not include the right to grant a licence to any person to do an act referred to in subsection (2). (5) Where a product is disposed of to another in exercise of a right conferred by subsection (3), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the applicant in the patent application. [cf. 1992 No. 1 s. 55(2) to (4) Eire] PATENTS ORDINANCE - SECT 30 Effect of restoration of rights under section 29 VerDate:30/06/1997 (1) The effect of a restoration under section 29 is as follows. (2) A person who, during the period between the loss of rights referred to in section 29(1) and the advertisement in the Gazette of notice of the application for restoration under section 29(3)- (a) does in good faith an act which would constitute an infringement of the applicant's rights under the published application for a standard patent if those rights had not been lost; or (b) makes in good faith effective and serious preparations to do such an act, has the rights specified in subsection (3). (3) The rights referred to in subsection (2) are- (a) the right to continue to do or, as the case may be, to do the act referred to in subsection (2); (b) if such act was done or preparations had been made to do it in the course of a business- (i) in the case of an individual- (A) the right to assign the right to do it or to transmit such right on death; or (B) the right to authorize the doing of that act by any of his partners for the time being in the business in the course of which the act was done or preparations had been made to do it; (ii) in the case of a body corporate, the right to assign the right to do it or to transmit such right on the body's dissolution, and the doing of that act by virtue of this subsection shall not amount to an infringement of the applicant's rights under the published application for a patent concerned. (4) The rights specified in subsection (3) shall not include the right to grant a licence to any person to do an act referred to in subsection (2). (5) Where a product is disposed of to another in exercise of a right conferred by subsection (3), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the applicant in the patent application. [cf. 1992 No. 1 s. 55(2) to (4) Eire] PATENTS ORDINANCE - SECT 31 Amendment of application for standard patent VerDate:30/06/1997 PART III PROVISIONS AS TO APPLICATIONS FOR STANDARD PATENTS BEFORE GRANT (1) Subject to this section and sections 36 and 103, an applicant for a standard patent may at any time before a standard patent is granted pursuant to the application, in accordance with the prescribed conditions, amend the application of his own volition. (2) No amendment may be made under subsection (1) to the title of the invention, the abstract, a priority claim or any claim, description or drawing unless- (a) the application has been published; and (b) the amendment is an amendment that has been made to the corresponding designated patent application. (3) Upon receipt of particulars of an amendment filed in accordance with subsections (1) and (2) the Registrar shall record the amendment. PATENTS ORDINANCE - SECT 32 Withdrawal of application VerDate:30/06/1997 (1) Subject to section 36, an applicant for a standard patent may at any time before a standard patent is granted pursuant to the application withdraw in writing his application and any such withdrawal may not be revoked. (2) Where a patent application is withdrawn under this section, or is deemed under this Ordinance to have been withdrawn, or is refused under any provision of this Ordinance, then- (a) if the application has been published, section 94(3) shall continue to apply as regards the application; (b) the applicant shall continue to enjoy the right of priority under section 98 which he enjoyed immediately before such withdrawal or refusal; (c) no other right may be claimed under this Ordinance in relation to the application PATENTS ORDINANCE - SECT 33 Maintaining application for standard patent VerDate:01/07/1997 Amendments retroactively made - see 22 of 1999 s. 3 (1) This section applies to an application for a standard patent which has been published but in which no request has been made for registration and grant under section 23. (2) If it is desired to maintain a patent application to which this section applies for a further year after the expiry of the 5th or any succeeding year from the date specified in subsection (3), the applicant shall, before the expiry of that 5th or succeeding year (as the case may be), but not earlier than a date 3 months before that expiry, apply to the Registrar in the prescribed manner for the maintenance of the patent application ("maintenance application") and pay the prescribed fee ("maintenance fee") and a patent application to which this section applies shall be deemed to be withdrawn and abandoned at the expiry of that 5th or succeeding year if the maintenance application is not so made or the maintenance fee is not so paid. (3) The date specified for the purpose of subsection (2) is the anniversary of the date of filing the corresponding designated patent application first occurring after the date of publishing the request to record. (4) If, within 6 months after the end of the period specified in subsection (2) for the making of a maintenance application, an application is made under subsection (2) and the maintenance fee and any prescribed additional fee are paid in the prescribed manner then the patent application shall be treated as if it had not been withdrawn or abandoned. (5) If statements contained in the maintenance application indicate- (a) that as at a date specified in the application, being a date not earlier than 1 month before the date of making the application- (i) the designated patent application has not been withdrawn or abandoned for the purposes of the law of the designated patent office; and (ii) there has been no final refusal by the designated patent office to grant a patent pursuant to the designated patent application; and (b) that- (i) as at the date specified for the purposes of paragraph (a) a patent had not been granted pursuant to the designated patent application; or (ii) a patent has been granted pursuant to the designated patent application, and the date of such grant is a date within 6 months before the date of the application, the Registrar shall, subject to subsection (9), maintain the application for a patent. (6) Where a statement contained in a maintenance application indicates that a designated patent has been granted on a date within the 6 months before the date of the maintenance application, any maintenance of the patent application by virtue of subsection (5) shall have effect for a term ending 6 months after the date of such grant. (7) If there are deficiencies in the maintenance application that may be corrected the Registrar shall give the applicant an opportunity to correct them in accordance with the rules. (8) If the Registrar is not satisfied as to the veracity of a statement in the maintenance application, he shall notify the applicant accordingly giving reasons and shall allow the applicant an opportunity to make further statements or adduce material for the purpose of so satisfying him. (9) If in an application under this section- (a) statements contained in the application indicate that- (i) the designated patent application has been withdrawn or abandoned pursuant to the law of the designated patent office; (ii) the designated patent office has finally refused the grant of a patent in pursuance of the designated patent application; or (iii) a designated patent has been granted in pursuance of the designated patent application, and the date of such grant was a date more than 6 months before the date of the application; (b) deficiencies as noted by the Registrar are not corrected in accordance with the rules; or (c) the applicant has failed to satisfy the Registrar as to the veracity of a statement in respect of which notice has been given under subsection (8), the Registrar shall refuse to maintain the application for a patent and upon such refusal that application shall be deemed to be withdrawn or abandoned. (10) The Registrar may by regulation amend the period specified in subsection (2) by reference to which the earliest date for making a maintenance application under that subsection is determined. (11) The Chief Executive in Council may by regulation amend the period specified in subsection (2) as being the period after which a standard patent application not maintained shall be deemed to be withdrawn and abandoned. (Amended 22 of 1999 s. 3) [cf. EPC Art. 86] PATENTS ORDINANCE - SECT 33 Maintaining application for standard patent VerDate:30/06/1997 (1) This section applies to an application for a standard patent which has been published but in which no request has been made for registration and grant under section 23. (2) If it is desired to maintain a patent application to which this section applies for a further year after the expiry of the 5th or any succeeding year from the date specified in subsection (3), the applicant shall, before the expiry of that 5th or succeeding year (as the case may be), but not earlier than a date 3 months before that expiry, apply to the Registrar in the prescribed manner for the maintenance of the patent application ("maintenance application") and pay the prescribed fee ("maintenance fee") and a patent application to which this section applies shall be deemed to be withdrawn and abandoned at the expiry of that 5th or succeeding year if the maintenance application is not so made or the maintenance fee is not so paid. (3) The date specified for the purpose of subsection (2) is the anniversary of the date of filing the corresponding designated patent application first occurring after the date of publishing the request to record. (4) If, within 6 months after the end of the period specified in subsection (2) for the making of a maintenance application, an application is made under subsection (2) and the maintenance fee and any prescribed additional fee are paid in the prescribed manner then the patent application shall be treated as if it had not been withdrawn or abandoned. (5) If statements contained in the maintenance application indicate- (a) that as at a date specified in the application, being a date not earlier than 1 month before the date of making the application- (i) the designated patent application has not been withdrawn or abandoned for the purposes of the law of the designated patent office; and (ii) there has been no final refusal by the designated patent office to grant a patent pursuant to the designated patent application; and (b) that- (i) as at the date specified for the purposes of paragraph (a) a patent had not been granted pursuant to the designated patent application; or (ii) a patent has been granted pursuant to the designated patent application, and the date of such grant is a date within 6 months before the date of the application, the Registrar shall, subject to subsection (9), maintain the application for a patent. (6) Where a statement contained in a maintenance application indicates that a designated patent has been granted on a date within the 6 months before the date of the maintenance application, any maintenance of the patent application by virtue of subsection (5) shall have effect for a term ending 6 months after the date of such grant. (7) If there are deficiencies in the maintenance application that may be corrected the Registrar shall give the applicant an opportunity to correct them in accordance with the rules. (8) If the Registrar is not satisfied as to the veracity of a statement in the maintenance application, he shall notify the applicant accordingly giving reasons and shall allow the applicant an opportunity to make further statements or adduce material for the purpose of so satisfying him. (9) If in an application under this section- (a) statements contained in the application indicate that- (i) the designated patent application has been withdrawn or abandoned pursuant to the law of the designated patent office; (ii) the designated patent office has finally refused the grant of a patent in pursuance of the designated patent application; or (iii) a designated patent has been granted in pursuance of the designated patent application, and the date of such grant was a date more than 6 months before the date of the application; (b) deficiencies as noted by the Registrar are not corrected in accordance with the rules; or (c) the applicant has failed to satisfy the Registrar as to the veracity of a statement in respect of which notice has been given under subsection (8), the Registrar shall refuse to maintain the application for a patent and upon such refusal that application shall be deemed to be withdrawn or abandoned. (10) The Registrar may by regulation amend the period specified in subsection (2) by reference to which the earliest date for making a maintenance application under that subsection is determined. (11) The Governor in Council may by regulation amend the period specified in subsection (2) as being the period after which a standard patent application not maintained shall be deemed to be withdrawn and abandoned. [cf. EPC Art. 86] PATENTS ORDINANCE - SECT 34 Restoring application for standard patent VerDate:07/05/2004 (1) Where an application for a standard patent is deemed withdrawn under section 33 by reason only of the failure to pay any maintenance fee under that section within the period specified then the applicant may, within 12 months after the date on which the application was deemed withdrawn and on payment of the prescribed fee, apply to the Registrar in the prescribed manner for the restoration of the application for a standard patent. (2) The Registrar shall advertise in the official journal notice of any application under subsection (1). (Amended 2 of 2001 s. 14) (3) If on an application under subsection (1)- (a) the Registrar is satisfied that the failure to pay the maintenance fee within the specified period, or that fee and any additional fee under section 33(4) within 6 months after the end of the specified period, occurred in spite of the applicant having taken all reasonable care required by the circumstances; and (b) the requirements of subsection (4) are met, the Registrar shall order that the request to record be restored on payment of any such unpaid maintenance fee and additional fee. (4) An order for restoration shall not be made under subsection (3) unless it appears to the Registrar that at the date of the application for restoration- (a) the designated patent application is still valid and not withdrawn; and (b) a patent has not been granted in pursuance of that application or, if granted, the time for filing a request for registration and grant under section 23 has not expired. [cf. EPC Art. 122] PATENTS ORDINANCE - SECT 34 Restoring application for standard patent VerDate:30/06/1997 (1) Where an application for a standard patent is deemed withdrawn under section 33 by reason only of the failure to pay any maintenance fee under that section within the period specified then the applicant may, within 12 months after the date on which the application was deemed withdrawn and on payment of the prescribed fee, apply to the Registrar in the prescribed manner for the restoration of the application for a standard patent. (2) The Registrar shall advertise in the Gazette notice of any application under subsection (1). (3) If on an application under subsection (1)- (a) the Registrar is satisfied that the failure to pay the maintenance fee within the specified period, or that fee and any additional fee under section 33(4) within 6 months after the end of the specified period, occurred in spite of the applicant having taken all reasonable care required by the circumstances; and (b) the requirements of subsection (4) are met, the Registrar shall order that the request to record be restored on payment of any such unpaid maintenance fee and additional fee. (4) An order for restoration shall not be made under subsection (3) unless it appears to the Registrar that at the date of the application for restoration- (a) the designated patent application is still valid and not withdrawn; and (b) a patent has not been granted in pursuance of that application or, if granted, the time for filing a request for registration and grant under section 23 has not expired. [cf. EPC Art. 122] PATENTS ORDINANCE - SECT 35 Effect of restoration order under section 34 VerDate:07/05/2004 (1) The effect of a restoration under section 34(4) is as follows. (2) A person who, during the period between any deemed withdrawal such as is mentioned in section 34(1) and the advertisement in the official journal of notice of the application for restoration under section 34(2)- (Amended 2 of 2001 s. 14) (a) does in good faith an act which would constitute an infringement of the applicant's rights under the published application for a patent if those rights had not been lost; or (b) makes in good faith effective and serious preparations to do such an act, has the rights specified in subsection (3). (3) The rights referred to in subsection (2) are- (a) the right to continue to do or, as the case may be, to do the act referred to in subsection (2); (b) if such act was done or preparations had been made to do it in the course of a business- (i) in the case of an individual- (A) the right to assign the right to do it or to transmit such right on death; or (B) the rig