Hong Kong Ordinances

PATENTS ORDINANCE - SECT 72

References of disputes as to Government use

(1) Any dispute as to-

   (a)  the exercise by a public officer, or a person authorized by a public
        officer, of the powers conferred by section 69;

   (b)  terms for Government use of an invention under section 69;

   (c)  the right of any person to receive any part of a payment made in
        pursuance of section 69(4); or

   (d)  the right of any person to receive a payment under section 71, may be
        referred to the court by either party to the dispute after a patent
        has been granted for the invention.

(2) In determining under this section any dispute between the Government and
any person as to the terms for the Government use of an invention, the court
shall have regard-

   (a)  to any benefit or compensation which that person or any person from
        whom he derives title may have received or may be entitled to receive
        directly or indirectly from any public officer in respect of the
        invention in question;

   (b)  to whether that person or any person from whom he derives title has in
        the court's opinion without reasonable cause failed to comply with a
        request of the public officer concerned for Government use of the
        invention on reasonable terms.

(3) On a reference under this section the court may refuse to grant relief by
way of compensation in respect of Government use of an invention-

   (a)  during any further period specified under section 33(4), but before
        payment of the maintenance fee and any additional fee prescribed for
        the purposes of that section; or

   (b)  during any further period specified under section 39(4) or 126(5) (as
        the case may be), but before the payment of the renewal fee and any
        additional fee prescribed for the purposes of that section.

(4) Where an amendment of the specification of a patent has been allowed under
this Ordinance or has been recorded under section 43(2), the court shall not
grant relief by way of compensation under this section in respect of any such
use before the decision to allow the amendment or the recording of the
amendment unless the court is satisfied that the specification of the
patent as published was framed in good faith and with reasonable skill and
knowledge.

(5) If the validity of a patent is put in issue in proceedings under this
section and it is found that the patent is only partially valid, the court
may, subject to subsection (6), grant relief to the proprietor of the patent
in respect of that part of the patent which is found to be valid and to have
been used in Government use.

(6) Where in any such proceedings it is found that a patent is only partially
valid, the court shall not grant relief by way of compensation, costs or
expenses except where the proprietor of the patent proves that the
specification of the patent was framed in good faith and with reasonable skill
and knowledge, and in that event the court may grant relief in respect of that
part of the patent which is valid and has been so used, subject to the
discretion of the court as to costs and expenses and as to the date from which
compensation should be awarded.

(7) As a condition of any such relief the court may direct that the
specification of the patent shall be amended to its satisfaction upon an
application made for that purpose under section 102, and an application may be
so made accordingly, whether or not all other issues in the proceedings have
been determined.

(8) In considering the amount of any compensation for Government use of an
invention after publication of an application for a standard  patent for the
invention and before such a patent is granted, the court shall consider
whether or not it would have been reasonable to expect, from a consideration
of the application as published that a patent would be granted conferring on
the proprietor of the patent protection for an act of the same description as
that found to constitute that use, and if the court finds that it would not
have been reasonable, it shall reduce the compensation to such amount as it
thinks just.

(9) Where a person becomes the proprietor or one of the proprietors or an
exclusive licensee of a patent (the new proprietor or licensee) by virtue of a
transaction, instrument or event to which section 52 applies, then unless-

   (a)  an application for registration of the prescribed particulars of the
        transaction, instrument or event is made before the end of the period
        of 6 months beginning with its date; or

   (b)  the court is satisfied that it was not practicable for such an
        application to be made before the end of that period and that an
        application was made as soon as practicable thereafter, the new
        proprietor or licensee shall not be entitled to any compensation under
        section 69(4) (as it stands or as modified by section 70(4)) or to any
        compensation under section 71 in respect of any use of the patented 
        invention by a public officer or a person authorized by a public
        officer under section 69 after the date of the transaction, instrument
        or event and before the prescribed particulars of the transaction,
        instrument or event are registered.

(10) One of 2 or more joint proprietors of a patent or application 
for a patent may without the concurrence of the others refer a dispute to the
court under this section, but shall not do so unless the others are made
parties to the proceedings; but any of the others made a defendant shall not
be liable for any costs or expenses unless he enters an appearance and takes
part in the proceedings. [cf. 1977 c. 37 s. 58 U.K.]