Hong Kong Ordinances

PATENTS ORDINANCE - SECT 70

Rights of third parties in respect of Government use

(1) The provisions of any licence, assignment or agreement specified in
subsection (3) are of no effect in relation to-

   (a)  any Government use of an invention by a public officer, or a person
        authorized by a public officer, by virtue of section 69; or

   (b)  anything done for Government use to the order of a public officer by
        the proprietor of a patent in respect of a patented invention or by
        the proprietor of an application in respect of an invention for which
        an application for a patent has been filed and is still pending, so
        far as those provisions-

        (i)    restrict or regulate the working of the invention, or the use
               of any model, document or information relating to it; or

        (ii)   provide for the making of payments in respect of, or calculated
               by reference to, such working or use.

(2) The reproduction or publication of any model or document in connection
with a working or use referred to in subsection (1) shall not be deemed to be
an infringement of any copyright or protected layout-design (topography)
subsisting in the model or document.

(3) The licence, assignment or agreement referred to in subsection

(1) is any licence, assignment or agreement which is made, whether before or
after the date of commencement of this Ordinance, between any person who is a
proprietor of or an applicant for the patent, or anyone who derives title from
any such person or from whom such person derives title

(on the one hand), and any person whatever other than the Government (on the
other hand).

(4) Where an exclusive licence granted otherwise than for royalties or other
benefits determined by reference to the working of the invention is in force
under the patent or application concerned, then-

   (a)  section 69(4) applies in relation to anything done in respect of the
        invention which, but for this section and section 69(1), would be an
        infringement of the rights of the licensee, with the substitution in
        those provisions of reference to the proprietor of the patent with
        reference to the licensee; and

   (b)  section 69(4) does not apply in relation to anything done in respect
        of the invention by the licensee by virtue of an authority given under
        section 69(1).

(5) Subject to subsection (4), where the patent, or the right to the grant of
the patent, has been assigned to the proprietor of the patent or application
in consideration of royalties or other benefits determined by reference to the
working of the invention, then-

   (a)  section 69(4) applies in relation to any Government use of the
        invention as if reference to the proprietor of the patent included a
        reference to the assignor, and any sum payable for Government use
        under that subsection shall be divided between those persons in such
        proportion as may be agreed on by them or as may in default of
        agreement be determined by the court on a reference under section 72;
        and

   (b)  section 69(4) applies in relation to any act done in respect of the
        invention for Government use by the proprietor of the patent or
        application to the order of a public officer, as if that act were use
        made by virtue of an authority given under that section.

(6) Where section 69(4) applies to any use of an invention and a person holds
an exclusive licence under the patent or application concerned (other than
such a licence as is mentioned in subsection (4)) authorizing him to work the
invention, then subsections (8) and (9) shall apply.

(7) In subsections (8) and (9) "the section 69(4) payment" (第69(4)條付
款) means such payment (if any) as the proprietor of the patent or
application and the Government agree under section 69, or the court determines
under section 72, should be made by the public officer  concerned to the
proprietor in respect of the use of the invention.

(8) The licensee shall be entitled to recover from the proprietor of the
patent or application such part (if any) of the section 69(4) payment as may
be agreed on by them or as may in default of agreement be determined by the
court under section 72 to be just having regard to any expenditure incurred by
the licensee-

   (a)  in developing the invention; or

   (b)  in making payments to the proprietor in consideration of the licence,
        other than royalties or other payments determined by reference to the
        use of the invention.

(9) Any agreement by the proprietor of the patent or application and the
Government under section 69(4) as to the amount of the section  69 (4) payment
shall be of no effect unless the licensee consents to the agreement; and any
determination by the court under section 69(4) as to the amount of that
payment shall be of no effect unless the licensee has been informed of the
reference to the court and is given an opportunity to be heard.

(10) In this section "the public officer concerned" (有關公職人員), in
relation to any Government use of an invention, means the public officer by
whom or on whose authority the use was made. [cf. 1977 c. 37 s. 57 U.K.] "the
section 69(4) payment" (第69(4)條付款)

"the public officer concerned" (有關公職人員)