Hong Kong Ordinances

PATENTS ORDINANCE - SECT 59

Amount of compensation

(1) An award of compensation to an employee under section 58(1) or

(2) in relation to a patent for an invention shall be such as will secure for
the employee a fair share (having regard to all the circumstances) of the
benefit which the employer has derived, or may reasonably be expected to
derive, from-

   (a)  the patent; or

   (b)  the assignment or grant to a person connected with the employer of-

        (i)    the property or any right in the invention; or

        (ii)   the property in, or any right in or under, an application for
               that patent.

(2) For the purposes of subsection (1), the amount of any benefit derived or
expected to be derived by an employer from the assignment or grant of-

   (a)  the property in, or any such right in or under-

        (i)    a patent for the invention; or

        (ii)   an application for such a patent; or

   (b)  the property or any right in the invention, to a person connected with
        him shall be taken to be the amount which could reasonably be expected
        to be so derived by the employer if that person had not been connected
        with him.

(3) In determining the fair share of the benefit to be secured for an employee
in respect of a patent for an invention which has always belonged to an
employer, the court shall, among other things, take the following matters into
account, that is to say-

   (a)  the nature of the employee's duties, his remuneration and the other
        advantages he derives or has derived from his employment or has
        derived in relation to the invention under this Ordinance;

   (b)  the effort and skill which the employee has devoted to making the
        invention;

   (c)  the effort and skill which any other person has devoted to making the
        invention jointly with the employee concerned, and the advice and
        other assistance contributed by any other employee who is not a joint
        inventor of the invention; and

   (d)  the contribution made by the employer to the making, developing and
        working of the invention by the provision of advice, facilities and
        other assistance, by the provision of opportunities and by his
        managerial and commercial skill and activities.

(4) In determining the fair share of the benefit to be secured for an employee
in respect of a patent for an invention which originally belonged to him, the
court shall, among other things, take the following matters into account, that
is to say-

   (a)  any conditions in a licence or licences granted under this Ordinance
        or otherwise in respect of the invention or the patent;

   (b)  the extent to which the invention was made jointly by the employee
        with any other person; and

   (c)  the contribution made by the employer to the making, developing and
        working of the invention as mentioned in subsection (3)(d).

(5) Any order for the payment of compensation under section 58 may be an order
for the payment of a lump sum or for periodical payment, or both.

(6) Without prejudice to section 39(1) of the Interpretation and 
General Clauses Ordinance ( Cap 1), the refusal of the court to make any such
order on an application made by an employee under section 58 shall not prevent
a further application being made under that section by him or any successor in
title of his.

(7) Where the court has made any such order, the court may on the application
of either the employer or the employee vary or discharge it or suspend any
provision of the order and revive any provision so suspended. [cf. 1977 c. 37
s. 41 U.K.]