Hong Kong Ordinances

PATENTS ORDINANCE - SECT 64

Compulsory licences for standard patents

(Past version on 01/06/2002).
(Past version on 30/06/1997).

PART VIII

COMPULSORY LICENCES FOR STANDARD PATENTS

(1) At any time after the expiration of 3 years from the date of grant of a
standard patent any person may apply to the court on one or more of the
grounds specified in subsection (2)-

   (a)  for a licence under the patent;

   (b)  where the applicant is the Government, for the grant of a licence
        under the patent to any person specified in the application.

(2) The grounds referred to in subsection (1) are-

   (a)  where the patented invention is capable of being commercially worked
        in Hong Kong, that it is not being so worked or is not being so worked
        to the fullest extent that is reasonably practicable;

   (b)  where the patented invention is a product, that a demand for the
        product in Hong Kong is not being met on reasonable terms;

   (c)  where the patented invention is capable of being commercially worked
        in Hong Kong by manufacture, that it is being prevented or hindered
        from being so worked-

        (i)    in the case of a product, by the importation of the product; or

        (ii)   in the case of a process, by the importation of a product
               obtained directly by means of the process or to which the
               process has been applied;

   (d)  that by reason of the refusal by the proprietor of the patent to grant
        a 1icence or licences on reasonable terms-

        (i)    the working or efficient working in Hong Kong of any other
               patented invention which involves an important technical
               advance of considerable economic significance in relation to
               the patent is prevented or hindered; or

        (ii)   the establishment or development of commercial or industrial
               activities in Hong Kong is unfairly prejudiced; or

   (e)  that by reason of conditions imposed by the proprietor of the patent
        on the grant of licences under the patent, or on the disposal or use
        of the patented product or on the use of the patented process, the
        manufacture, use or disposal of materials not protected by the patent
        or the establishment or development of commercial or industrial
        activities in Hong Kong, is unfairly prejudiced.

(3) The court may, if it is satisfied that any of those grounds are
established, and subject to subsections (4) and (5), order the grant of a
licence on such terms as it thinks fit-

   (a)  to the applicant, where the application is made under subsection
        (1)(a); or

   (b)  to the person specified in the application, where the application is
        made under subsection (1)(b).

(4) Where the application is made on the ground that the patented  invention
is not being commercially worked in Hong Kong or is not being so worked to the
fullest extent that is reasonably practicable, and it appears to the court
that the time which has elapsed since the grant of the patent was advertised
in the official journal has for any reason been insufficient to enable the
invention to be so worked, the court may adjourn the hearing for such period
as will in the opinion of the court give sufficient time for the invention to
be so worked. (Amended 2 of 2001 s. 14)

(5) No order shall be made under this section unless the court is satisfied
that the applicant has made reasonable efforts to obtain authorization from
the proprietor on reasonable commercial terms and conditions and that such
efforts have not been successful within a reasonable period of time.

(6) No order shall be made under this section in respect of a
patent ("patent A") on the ground mentioned in subsection (2)(d)(i) unless the
court is satisfied that the proprietor of the patent for the other
invention ("patent B") is able and willing to grant to the proprietor of
patent A and his licensees a licence under patent B on reasonable terms.

(7) An order granting a licence under this section shall provide-

   (a)  that the licence shall be non-exclusive; and

   (b)  that such licence shall be non-assignable except with that part of the
        enterprise or goodwill which enjoys the use of the patent under the
        licence, and in the case of a licence granted under subsection (6) the
        licence in respect of patent A shall only be assignable with the
        assignment of patent B, (Amended 2 of 2001 s. 7) and shall specify the
        scope and duration of such licence.

(8) An application may be made under this section in respect of a patent
notwithstanding that the applicant is already the holder of a licence under
the patent; and no person shall be stopped from relying on any of the matters
specified in subsection (2) because of any admission made by him, whether in
such licence or otherwise or by reason of his having accepted such licence.
[cf. 1977 c. 37 s. 48 U.K.]