Hong Kong Ordinances

PATENTS ORDINANCE - SECT 62

Avoidance of certain restrictive conditions

PART VII

CONTRACTS AS TO PATENTED PRODUCTS, ETC.

(1) Subject to this section, any condition or term of a contract for the
supply of a patented product or of a licence to work a patented  invention, or
of a contract relating to any such supply or licence, shall be void in so far
as it purports-

   (a)  in the case of a contract for supply, to require the person supplied
        to acquire from the supplier, or his nominee, or prohibit him from
        acquiring from any specified person, or from acquiring except from the
        supplier or his nominee, anything other than the patented product;

   (b)  in the case of a licence to work a patented invention, to require the
        licensee to acquire from the licensor or his nominee, or prohibit him
        from acquiring from any specified person, or from acquiring except
        from the licensor or his nominee, anything other than the product
        which is the patented invention or (if it is a process) other than any
        product obtained directly by means of the process or to which the
        process has been applied;

   (c)  in either case, to prohibit the person supplied or licensee from using
        articles (whether patented products or not) which are not supplied by,
        or any patented process which does not belong to, the supplier or
        licensor, or his nominee, or to restrict the right of the person
        supplied or licensee to use any such articles or process.

(2) Subsection (1) does not apply to contracts made or licences granted before
the commencement of this Ordinance.

(3) In proceedings against any person for infringement of a patent it shall be
a defence to prove that at the time of the infringement there was in force a
contract relating to the patent made by or with the consent of the plaintiff
or a licence under the patent granted by him or with his consent and
containing in either case a condition or term void by virtue of this section.

(4) A condition or term of a contract or licence shall not be void by virtue
of this section if-

   (a)  at the time of the making of the contract or granting of the licence
        the supplier or licensor was willing to supply the product, or grant a
        licence to work the invention, as the case may be, to the person
        supplied or licensee, on reasonable terms specified in the contract or
        licence and without any such condition or term as is mentioned in
        subsection (1); and

   (b)  the person supplied or licensee is entitled under the contract or
        licence to relieve himself of his liability to observe the condition
        or term on giving to the other party 3 months' notice in writing and
        subject to payment to that other party of such compensation (being, in
        the case of a contract to supply, a lump sum or rent for the residue
        of the term of the contract and, in the case of a licence, a royalty
        for the residue of the term of the licence) as may in default of
        agreement between the parties be determined by an arbitrator appointed
        by the parties.

(5) If in any proceeding it is alleged that any condition or term of a
contract or licence is void by virtue of this section it shall lie on the
supplier or licensor to prove the matters set out in subsection (4)(a).

(6) A condition or term of a contract or licence shall not be void by virtue
of this section by reason only-

   (a)  that it prohibits any person from selling goods other than those
        supplied by a specified person; or

   (b)  in the case of a contract for the hiring of or licence to use a
        patented product, that it reserves to the bailor or licensor, or his
        nominee, the right to supply such new parts of the patented product as
        may be required to put or keep it in repair. [cf. 1977 c. 37 s. 44
        U.K.]