Hong Kong Ordinances

PATENTS ORDINANCE - SECT 55

Determination of right to patent after grant

(1) After a patent has been granted for an invention any person having or
claiming a proprietary interest in or under the patent may refer to the court
the question-

   (a)  who is or are the true proprietor or proprietors of the patent;

   (b)  whether the patent should have been granted to the person or persons
        to whom it was granted; or

   (c)  whether any right in or under the patent should be transferred or
        granted to any other person or persons, and the court shall determine
        the question and make such order as it thinks fit to give effect to
        the determination.

(2) Without prejudice to the generality of subsection (1), an order under that
subsection may contain provision-

   (a)  directing that the person by whom the reference is made under that
        subsection shall be included (whether or not to the exclusion of any
        other person) among the persons registered as proprietors of the
        patent;

   (b)  directing the registration of a transaction, instrument or event by
        virtue of which that person has acquired any right in or under the
        patent;

   (c)  granting any licence or other right in or under the patent;

   (d)  directing the proprietor of the patent or any person having any right
        in or under the patent to do anything specified in the order as
        necessary to carry out the other provisions of the order.

(3) If any person to whom directions have been given under subsection (2)(d)
fails to do anything necessary for carrying out any such directions within 14
days after the date of the order containing the directions, the court may, on
application made to it by any person in whose favour or on whose reference the
order containing the directions was made, authorize him to do that thing on
behalf of the person to whom the directions were given.

(4) Where the court finds on a reference under this section that the patent
was granted to a person not entitled to be granted that patent

(whether alone or with other persons) and on an application made under
section 91 makes an order on that ground for the conditional or unconditional
revocation of the patent, the court may order that the person by whom the
application was made or his successor in title may, subject to section 103,
make a new application for a patent-

   (a)  in the case of unconditional revocation, for the whole of the matter
        comprised in the specification of that patent; and

   (b)  in the case of conditional revocation, for the matter which in the
        opinion of the court should be excluded from that specification by
        amendment under section 102.

(5) Where a new application for a patent is made under subsection

(4), it shall be treated-

   (a)  as having been filed on the date of filing the application to which
        the reference relates; and

   (b)  as having the same date of filing and, where the reference under this
        section is in respect of a standard patent, as having the same
        deemed date of filing, as the application to which the reference
        relates.

(6) Where the reference under this section is in respect of a standard patent,
the court may order in respect of any new application under subsection (4)-

   (a)  that all or any of the requirements of section 15(2) or (3) or 23(3)
        or (4) be dispensed with; and

   (b)  that the person making the new application shall for the purposes of
        that application be deemed to have filed a request to record having
        the same date of filing as the request to record in the application
        for the patent to which the reference relates.

(7) On any such reference as is mentioned in subsection (4) no order shall be
made under this section transferring the patent to which the reference relates
on the ground that the patent was granted to a person not so entitled, and no
order shall be made under subsection (4) on that ground, if the reference was
made after the end of 2 years beginning with the date of the grant, unless it
is shown that any person registered as a proprietor of the patent knew at the
time of the grant or, as the case may be, of the transfer of the patent to him
that he was not entitled to the patent.

(8) Where a question is referred to the court under this section an order
shall not be made by virtue of subsection (2) or under subsection

(4) on the reference unless notice of the reference is given to all persons
registered as proprietor of the patent or as having a right in or under the
patent except those who are parties to the reference. [cf. 1977 c. 37 s. 37
U.K.]