PATENTS ORDINANCE - CHAPTER 514 PATENTS ORDINANCE - LONG TITLE Long title VerDate:30/06/1997 An Ordinance to make new provision in respect of patents and related matters in substitution for the Registration of Patents Ordinance. [The Ordinance, other than section 125 } 27 June 1997 Section 125 } 1 July 1997 L.N. 367 of 1997] (Originally 52 of 1997) PATENTS ORDINANCE - SECT 1 Short title VerDate:30/06/1997 PART I PRELIMINARY (1) This Ordinance may be cited as the Patents Ordinance. (2) (Omitted as spent) PATENTS ORDINANCE - SECT 2 Interpretation VerDate:22/02/2008 (1) In this Ordinance, unless the context otherwise requires- "application for a patent" (專利的申請) means an application for a standard patent or an application for a short-term patent; "court" (法院) means the Court of First Instance; (Amended 25 of 1998 s. 2) "date of filing" (提交日期)- (a) in relation to a request to record or a request for registration and grant, means the date which is the date of filing that request by virtue of section 17 or 24 respectively; (b) in relation to an application for a standard patent has the meaning specified in relation to that term in section 3(ii); (c) in relation to a designated patent application, means the date specified as such in the designated patent application; "Doha Declaration" (《多哈宣言》) means the Declaration on the TRIPS Agreement and Public Health adopted on 14 November 2001 by the Fourth WTO Ministerial Conference at Doha, Qatar; (Added 21 of 2007 s. 3) "eligible importing member" (合資格進口成員地) means- (a) a WTO member country, territory or area recognized by the United Nations as being a least-developed country; or (b) any other WTO member country, territory or area that has given notice in writing to the TRIPS Council that it intends to import pharmaceutical products in accordance with the General Council Decision or the Protocol; (Added 21 of 2007 s. 3) "employee" (僱員) means a person who works or (where the employment has ceased) worked under a contract of employment (whether with the Government or with any other person); "employer" (僱主), in relation to an employee, means the person by whom the employee is or was employed; "exclusive licence" (專用特許) means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorized by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application for a patent relates, and "exclusive licensee" (專用特許持有人) and "non-exclusive licence" (非專用特許) shall be construed accordingly; "exporting member" (出口成員地) means a WTO member country, territory or area that makes a patented pharmaceutical product for export to an eligible importing member in accordance with the General Council Decision or the Protocol; (Added 21 of 2007 s. 3) "General Council Decision" (《總理事會決定》) means the Decision adopted by the General Council of the WTO on 30 August 2003 on the Implementation of Paragraph 6 of the Doha Declaration; (Added 21 of 2007 s. 3) "international application" (國際申請) means an international application for a patent made under the Patent Cooperation Treaty; "International Bureau" (國際局) means the International Bureau of Intellectual Property provided for under the Convention Establishing the World Intellectual Property Organization signed at Stockholm on 14 July 1967; "law of the designated patent office" (指定專利當局的法律) means- (a) in relation to a designated patent office established under the law of any country, territory or area other than Hong Kong, the law of that country, territory or area; (b) in relation to a designated patent office established under an international agreement, the provisions of the international agreement; "mortgage" (按揭) when used as a noun, includes a charge for securing money or money's worth and, when used as a verb, shall be construed accordingly; "non-prejudicial disclosure" (不具損害性的披露) means, in relation to an invention, a disclosure of the invention which is not to be taken into consideration for the purposes of determining whether or not the invention forms part of the state of the art; "official journal" (官方公報) means the publication for the time being specified under section 150A as the official journal of record; (Added 2 of 2001 s. 2) "opposition or revocation proceedings" (反對或撤銷專利的法律程序) means, in relation to a designated patent, proceedings under the law of the designated patent office providing for the revocation or amendment of the designated patent within a specified period after the grant; "Paris Convention" (《巴黎公約》) means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883, as revised or amended from time to time; (Amended 2 of 2001 s. 2) "Paris Convention country" (巴黎公約國) means- (a) any country for the time being specified in Schedule 1 as being a country which has acceded to the Paris Convention; (b) any territory or area subject to the authority or under the suzerainty of any country specified in Schedule 1 pursuant to paragraph (a), or any territory or area administered by any such country, on behalf of which such country has acceded to the Paris Convention; "patent application" (專利申請) has the same meaning as an application for a patent; "Patent Cooperation Treaty" (《專利合作條約》) means the treaty of that name done at Washington on 19 June 1970, as revised or amended from time to time; (Amended 2 of 2001 s. 2) "patented invention" (專利發明) means an invention for which a standard patent or, as the case may be, a short-term patent is granted and "patented process" (專利方法) shall be construed accordingly; "patented pharmaceutical product" (專利藥劑製品) means- (a) a pharmaceutical product which is an invention for which a standard patent or a short-term patent (as the case may be) has been granted; (b) in relation to a process for which a standard patent or a short-term patent (as the case may be) has been granted, a pharmaceutical product obtained directly by means of the process or to which the process has been applied; (Added 21 of 2007 s. 3) "patented product" (專利產品) means- (a) a product which is an invention for which a standard patent or a short-term patent (as the case may be) has been granted; (b) in relation to a process for which a standard patent or a short-term patent (as the case may be) has been granted, a product obtained directly by means of the process or to which the process has been applied; "pharmaceutical product" (藥劑製品) means- (a) a pharmaceutical product within the meaning of section 2(1) of the Pharmacy and Poisons Ordinance (Cap 138); (b) an active ingredient that is needed for making of a pharmaceutical product mentioned in paragraph (a); or (c) a diagnostic kit that is needed for the use of a pharmaceutical product mentioned in paragraph (a); (Added 21 of 2007 s. 3) "prescribed" (訂明) means prescribed or provided for by rules made under section 149; "protected layout-design (topography)" (受保護的布圖設計(拓撲圖)) has the meaning assigned to that term by section 2(1) of the Layout-design (Topography) of Integrated Circuits Ordinance (Cap 445); "Protocol" (《日內瓦議定書》) means the Protocol Amending the TRIPS Agreement adopted by the General Council of the WTO at Geneva on 6 December 2005, the Annex to the Protocol Amending the TRIPS Agreement, the Annex to the TRIPS Agreement and the Appendix to the Annex to the TRIPS Agreement; (Added 21 of 2007 s. 3) "register" (註冊紀錄冊、註冊)- (a) as a noun, means the register of patents kept under section 51; and (b) as a verb, means, in relation to any thing, to register or register particulars, or enter notice of that thing in the register and, in relation to a person, means to enter his name in the register, and cognate expressions shall be construed accordingly; "Registrar" (處長) means the Registrar of Patents; "Registrar of Patents" (專利註冊處處長) means the person holding that office by virtue of the Director of Intellectual Property (Establishment) Ordinance (Cap 412); "registry" (註冊處) means the Patents Registry administered by the Registrar; "relevant instrument or legislation" (有關文書或法例) means- (a) the General Council Decision; (b) the Protocol; or (c) legislation made by the exporting member or the eligible importing member, as the case may be, pursuant to or for the purpose of implementing- (i) the General Council Decision; or (ii) the Protocol; (Added 21 of 2007 s. 3) "request for registration and grant" (註冊與批予請求) means a request under section 23 for the registration of a designated patent and the grant of a standard patent for the invention shown in the published specification of the designated patent; "request to record" (記錄請求) means a request under section 15 to record a designated patent application; "right" (權利), in relation to any patent or patent application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent; "rules" (規則) means rules made by the Registrar under section 149; "short-term patent" (短期專利) means a patent for an invention granted under Part XV; "short-term patent application" (短期專利申請) means an application under Part XV for a short-term patent; "specification"' (說明書), in relation to an application for a patent under this Ordinance, a designated patent application or an international application, means the description, claims and drawings contained in the application; "standard patent" (標準專利) means a patent for an invention granted under Part II; "standard patent application" (標準專利申請) means an application under Part II for a standard patent; "TRIPS Agreement" (《知識產權協議》) means the Agreement on Trade-Related Aspects of Intellectual Property Rights, being Annex 1C of the World Trade Organisation Agreement; (Added 21 of 2007 s. 3) "TRIPS Council" (知識產權理事會) means the Council for Trade-Related Aspects of Intellectual Property Rights referred to in Article 68 of the TRIPS Agreement; (Added 21 of 2007 s. 3) "verified copy" (核實副本) means, in relation to a document, a copy verified in the prescribed manner; "World Trade Organisation Agreement" (《世界貿易組織協議》) means the agreement of that name done at Marrakesh in 1994, as revised or amended from time to time; (Amended 2 of 2001 s. 2) "WTO" (世界貿易組織) means the World Trade Organisation established in Geneva on 1 January 1995 under the World Trade Organisation Agreement; (Added 21 of 2007 s. 3) "WTO member country, territory or area" (世界貿易組織成員國、地區或地方) means any country, territory or area for the time being specified in Schedule 1 as being a country, territory or area which has acceded to the World Trade Organisation Agreement. (2) The expressions listed in the left-hand column below are defined in, or fall to be construed in accordance with, the provisions of this Ordinance listed in the right-hand column in relation to those expressions. Expression Relevant Provision Application for a standard patent (標準專利的申請) section 3 Corresponding designated patent (相應指定專利) section 4 Corresponding designated patent application (相應指定專利申請) section 4 Deemed date of filing (當作提交日期) section 38 Designated patent (指定專利) section 4 Designated patent application (指定專利申請) section 4 Divisional designated patent application (指定專利的分開申請) section 22(1) Government use (政府徵用) section 69(2) Paris Convention country (巴黎公約國) section 98(6) Patent (專利) section 6(1) Published (發表) section 5 Work (實施) section 6(4) "application for a patent" (專利的申請) "court" (法院) "date of filing" (提交日期) "Doha Declaration" (《多哈宣言》) "eligible importing member" (合資格進口成員地) "employee" (僱員) "employer" (僱主) "exclusive licence" (專用特許) "exclusive licensee" (專用特許持有人) and "non-exclusive licence" (非專用特許) "exporting member" (出口成員地) "General Council Decision" (《總理事會決定》) "international application" (國際申請) "International Bureau" (國際局) "law of the designated patent office" (指定專利當局的法律) "mortgage" (按揭) "non-prejudicial disclosure" (不具損害性的披露) "official journal" (官方公報) "opposition or revocation proceedings" (反對或撤銷專利的法律程序) "Paris Convention" (《巴黎公約》) "Paris Convention country" (巴黎公約國) "patent application" (專利申請) "Patent Cooperation Treaty" (《專利合作條約》) "patented invention" (專利發明) "patented process" (專利方法) "patented pharmaceutical product" (專利藥劑製品) "patented product" (專利產品) "pharmaceutical product" (藥劑製品) "prescribed" (訂明) "protected layout-design (topography)" (受保護的布圖設計(拓撲圖)) "Protocol" (《日內瓦議定書》) "register" (註冊紀錄冊、註冊) "Registrar" (處長) "Registrar of Patents" (專利註冊處處長) "registry" (註冊處) "relevant instrument or legislation" (有關文書或法例) "request for registration and grant" (註冊與批予請求) "request to record" (記錄請求) "right" (權利) "rules" (規則) "short-term patent" (短期專利) "short-term patent application" (短期專利申請) "specification"' (說明書) "standard patent" (標準專利) "standard patent application" (標準專利申請) "TRIPS Agreement" (《知識產權協議》) "TRIPS Council" (知識產權理事會) "verified copy" (核實副本) "World Trade Organisation Agreement" (《世界貿易組織協議》) "WTO" (世界貿易組織) "WTO member country, territory or area" (世界貿易組織成員國、地區或地方) PATENTS ORDINANCE - SECT 3 Meaning of "application for a standard patent" VerDate:30/06/1997 In this Ordinance, unless the context otherwise requires, reference to an application for a standard patent is a reference to proceedings under Part II- (a) under sections 15 to 22 to record a designated patent application; and <* Note-Exp. x-Ref: Sections 15, 16, 17, 18, 19, 20, 21, 22 *> (b) under sections 23 to 27 for the registration of a designated patent and the grant of a standard patent for the invention shown in the published specification of the designated patent, <* Note-Exp. x-Ref: Sections 23, 24, 25, 26, 27 *> up to but not including the grant of the standard patent, and cognate expressions shall be construed accordingly; and reference to- (i) the filing of an application for a standard patent is a reference to the filing of a request to record; (ii) the date of filing an application for a standard patent is a reference to the date of filing a request to record; (iii) an application for a standard patent as filed is a reference to a request to record as filed; (iv) the publication of an application for a standard patent is a reference to the publication of a request to record; (v) an invention which is the subject of an application for a standard patent, or an invention in respect of which an application for a standard patent has been made, is a reference to the invention disclosed in the specification of the corresponding designated patent or, if no request for registration and grant has been filed in the application, of the designated patent application; (vi) the specification of an application for a standard patent is a reference to the specification of the corresponding designated patent application. PATENTS ORDINANCE - SECT 4 Meaning of "designated patent", etc. VerDate:30/06/1997 (1) In this Ordinance, unless the context otherwise requires- "designated patent" (指定專利) means a patent granted by a designated patent office; "designated patent application" (指定專利申請) means- (a) an application in a designated patent office for a patent, which application has been published under the law of the designated patent office; (b) an international application which has been published and which has validly entered its national phase in a designated patent office; "designated patent office" (指定專利當局) means a patent office designated for the purpose of this Ordinance under section 8. (2) In this Ordinance, unless the context otherwise requires, a reference- (a) to a "corresponding designated patent" in relation to a standard patent, is a reference to the designated patent which was registered under section 27 in an application for the grant of the standard patent; (b) to a "corresponding designated patent application"- (i) in relation to an application for a standard patent for an invention, is a reference to the designated patent application in respect of that invention; (ii) in relation to a standard patent, is a reference to the designated patent application in pursuance of which the corresponding designated patent was granted. "designated patent" (指定專利) "designated patent application" (指定專利申請) "designated patent office" (指定專利當局) "corresponding designated patent" "corresponding designated patent application" PATENTS ORDINANCE - SECT 5 Meaning of "published" VerDate:30/06/1997 (1) In this Ordinance, unless the context otherwise requires- (a) "published" (發表) means made available to the public (whether in Hong Kong or elsewhere); and (b) a document shall be taken to be published under any provision of this Ordinance if it can be inspected as of right at any place in Hong Kong by members of the public, whether on payment of a fee or not. (2) Without prejudice to subsection (1), and unless the context otherwise requires, a reference in this Ordinance- (a) to the grant of a standard patent being published is a reference to its being published under section 27; (b) to a request to record being published is a reference to its being published under section 20; (c) to a designated patent being published is a reference to its being published by the designated patent office by which the patent was granted for the purposes of the law of that office relating to applications for and the granting of patents; (d) to a designated patent application being published is a reference- (i) except as provided in subparagraph (ii), to its being published by the designated patent office in which the application was made; (ii) in the case of a designated patent application based on an international application, to the international application being published by the International Bureau under the Patent Cooperation Treaty, or by the designated patent office in which the application was made, whichever is the earlier; (e) to a short-term patent being published is a reference to its being published under section 118. "published" (發表) PATENTS ORDINANCE - SECT 6 Other references VerDate:30/06/1997 (1) Unless the context otherwise requires, a reference in this Ordinance to a patent is a reference to a standard patent or a short-term patent granted under this Ordinance. (2) Unless the context otherwise requires, a reference in this Ordinance to an international agreement is a reference to- (a) the agreement, or any other international agreement replacing it, as may from time to time be amended or supplemented by or in accordance with any international agreement (including any protocol or annex); (b) any instrument made under any such agreement to provide for amendment to or supplementation of the agreement. (3) Unless the context otherwise requires, a reference in this Ordinance to an enactment or law of a country, territory or area other than Hong Kong shall be construed as a reference to that enactment or law as it may from time to time be amended or extended by or under any other enactment or law of the country, territory or area. (4) Unless the context otherwise requires, a reference in this Ordinance to an invention being worked in Hong Kong includes a reference to the invention being worked by importation into Hong Kong for the purpose of putting the patented product on the market or stocking it for that purpose. (5) For the purposes of this Ordinance matter shall be taken to have been disclosed in any designated patent application or in the specification of a patent or a designated patent if it was either claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in any such application or specification. [cf. 1977 c. 37 s. 130(3) U.K.] PATENTS ORDINANCE - SECT 7 Provisions regarding filing of documents, etc. VerDate:30/06/1997 In this Ordinance, unless the context otherwise requires, a reference providing for the filing of any document with the Registrar shall be deemed to include a reference requiring the payment of any fee that may be prescribed for the filing of that document, and a document shall be deemed not to be duly filed for the purposes of this Ordinance unless any such fee as may be prescribed for the filing of the document is paid as so prescribed. PATENTS ORDINANCE - SECT 8 Designation of patent offices VerDate:01/07/1997 Amendments retroactively made - see 22 of 1999 s. 3 The Chief Executive in Council may for the purposes of this Ordinance by notice published in the Gazette designate a patent office established under the law of any country, territory or area other than Hong Kong or established under any international agreement. (Amended 22 of 1999 s. 3) PATENTS ORDINANCE - SECT 9 Special provision regarding invention covered by 2 or more patents VerDate:22/02/2008 Where there are in effect 2 or more patents for the same invention, any use of the invention which does not constitute an infringement of any one such patent (whether by virtue of consent given by the proprietor, a compulsory licence having effect under Part VIII, the provisions of Part IX relating to Government use, an import compulsory licence having effect under Part IXA or an export compulsory licence having effect under Part IXB) shall not constitute an infringement of the other such patent. (Amended 21 of 2007 s. 4) PATENTS ORDINANCE - SECT 10 General provision regarding applications for standard patents VerDate:30/06/1997 PART II APPLICATIONS FOR STANDARD PATENTS Introduction This Part shall be construed as providing for the grant of a standard patent for an invention in the following circumstances, and only in those circumstances, namely where- (a) an application for a patent for that invention has been filed in and published by a designated patent office (and in this Ordinance a patent application so filed and published is referred to as a "designated patent application"); (b) as the first stage of an application for a standard patent, the designated patent application has been recorded in the register and published in Hong Kong in accordance with sections 15 to 22; <* Note-Exp. x-Ref: Sections 15, 16, 17, 18, 19, 20, 21, 22 *> (c) a patent has been granted in the designated patent office in pursuance of the designated patent application (and in this Ordinance such a patent is referred to as a "designated patent"); and (d) as the second stage of the application for a standard patent, the designated patent has been registered in accordance with sections 23 to 27. <* Note-Exp. x-Ref: Sections 23, 24, 25, 26, 27 *> PATENTS ORDINANCE - SECT 11 Formality examination of applications for standard patent VerDate:30/06/1997 Except as expressly provided to the contrary, nothing in this Part providing for the examination by the Registrar of an application for a standard patent for an invention shall be construed as imposing upon the Registrar any obligation to consider or to have regard to, for the purpose of such examination, any question as to- (a) the patentability of the invention; (b) whether the applicant is entitled to any priority claimed in the application; (c) whether the invention is properly disclosed in the application; or (d) whether any requirement under sections 45, 77, 78, 79, 93, 94, 95, 96, 97, 98, 99 or 100 has been complied with. PATENTS ORDINANCE - SECT 12 Who may apply VerDate:30/06/1997 Right to apply (1) The person who may apply for the grant of a standard patent for an invention is- (a) the person named as applicant in a designated patent application for a patent for the invention, or his successor in title to the rights under the designated patent application in Hong Kong; or (b) in preference to the person mentioned in paragraph (a), the person who is entitled to the property in the invention in Hong Kong. (2) Subject to any determination under section 13, the applicant for a standard patent for an invention in proceedings before the Registrar shall for the purpose of those proceedings be deemed to be the person entitled to apply for the grant of a patent for that invention under subsection (1). [cf. 1977 c. 37 s. 7 U.K.] PATENTS ORDINANCE - SECT 13 Determination before grant of questions as to who may apply VerDate:30/06/1997 (1) At any time before a standard patent has been granted for an invention (whether or not an application has been made for a standard patent for the invention)- (a) any person may refer to the Registrar or the court the question of whether he is entitled under section 12 (alone or with other persons) to apply for the grant of a standard patent for the invention; or (b) any of 2 or more joint proprietors of an application for a patent for that invention may so refer the question whether any right in or under the application should be transferred or granted to any other person. (2) The Registrar or the court may make such order as he or it thinks fit to give effect to a determination under this section. (3) Where a question is referred to the Registrar or the court under this section after an application for a standard patent has been filed but before a standard patent is granted in pursuance of the application then the Registrar or the court may, unless the application is withdrawn before the reference is disposed of by the Registrar or the court- (a) order that the application for a standard patent shall proceed in the name of that person, either solely or jointly with that of any other applicant, instead of in the name of the applicant or any specified applicant; (b) where the reference was made by 2 or more persons, order that the application shall proceed in all their names jointly; or (c) make an order transferring or granting any licence or other right in or under the application and give directions to any person for carrying out the provisions of any such order. (4) Where a person refers a question under subsection (1)(b) relating to an application, any order under subsection (2) may contain directions to any person for transferring or granting any right in or under the application. (5) If any person to whom directions have been given under subsection (3)(c) or (4) fails to do anything necessary for carrying out any such directions within 14 days after the date of the directions, the Registrar or the court may on application made to him or it by any person in whose favour or on whose reference the directions were given authorize him to do that thing on behalf of the person to whom the directions were given. (6) No order shall be made under subsection (3) unless notice of such reference is given in the prescribed manner to- (a) the applicant for the standard patent (not being a party to the reference); or (b) any other person (not being a party to the reference) who it is alleged in the reference has the right, by virtue of any transaction, instrument or event relating to the invention or the application, to apply for the grant of the standard patent whether alone or with any other person, and any person receiving such notice may oppose the reference. (7) No directions shall be given under this section so as to affect the mutual rights or obligations of trustees or of the personal representatives of deceased persons, or their rights or obligations as such. [cf. 1977 c. 37 s. 8 U.K.] PATENTS ORDINANCE - SECT 14 Effect of transfer of application under section 13 VerDate:30/06/1997 (1) Where an order is made or directions are given under section 13 that an application for a standard patent shall proceed in the name of one or some of the original applicants (whether or not it is also to proceed in the name of some other person), any licences or other rights in or under the application shall, subject to the order and any directions under that section, continue in force and be treated as granted by the persons in whose name the application is to proceed. (2) Where an order is made or directions are given under section 13 that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant (on the ground that the original applicant or applicants was or were not entitled to apply under section 12 for the grant of the patent), any licences or other rights in or under the application for a standard patent shall, subject to the order and any directions under that section and subject to subsection (3), lapse on the registration of that person or those persons as the applicant or applicants or, where the application for a standard patent has not been published, on the making of the order. (3) If before a reference to the Registrar or the court under section 13 resulting in the making of any order mentioned in subsection (2)- (a) the original applicant or any of the applicants, acting in good faith, worked the invention in question in Hong Kong or made effective and serious preparations to do so; or (b) a licensee of the applicant, acting in good faith, worked the invention in Hong Kong or made effective and serious preparations to do so, that or those original applicant or applicants or the licensee shall, on making a request within the prescribed period to the person in whose name the application is to proceed, be entitled to be granted a licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention. (4) Any such licence shall be granted for a reasonable period and on reasonable terms. (5) Where an order is made as mentioned in subsection (2), the person in whose name the application is to proceed or any person claiming that he is entitled to be granted any such licence may refer to the Registrar or the court the question whether the latter is so entitled and whether any such period is or terms are reasonable, and the Registrar or the court, as appropriate, shall determine the question and may, if he or it considers it appropriate, order the grant of such a licence. (6) The Registrar or the court may make such order as he or it thinks fit to give effect to a determination under subsection (5). [cf. 1977 c. 37 s. 11 U.K.] PATENTS ORDINANCE - SECT 15 Filing of request to record VerDate:01/06/2002 Request to record a designated patent application (1) A person entitled under section 12(1) to apply for the grant of a standard patent for an invention may, at any time within 6 months after the date of publication of an application in a designated patent office for a patent for the invention, request the Registrar to enter a record of that designated patent application in the register (in this Ordinance referred to as a "request to record"). (2) Every such request shall be signed by the applicant and be filed with the Registrar in the prescribed manner and shall contain- (a) a photocopy of the designated patent application as published, that is to say, including any description, claims, drawings, search report or abstract published together with the designated patent application; (b) where the designated patent application does not contain the name of any person as being the inventor, a statement identifying the person or persons whom the applicant believes to be the inventor or inventors; (c) the name and address of the person making the request; (d) where the person filing the request is a person other than the person named as applicant in the designated patent application, a statement explaining his entitlement to apply for the grant of a standard patent for the invention and prescribed documents supporting that statement; (e) where priority is claimed under section 98 in respect of a right of priority enjoyed in the designated patent office on the basis of an earlier application as mentioned in that section, a statement that indicates the details of- (Amended 2 of 2001 s. 3) (i) the date of priority claimed; (ii) the country in which the earlier application was filed; (f) where at the time of filing the designated patent application a claim was made in accordance with the law of the designated patent office in respect of any previous disclosure of the invention that was, for the purposes of the law of the designated patent office, a non-prejudicial disclosure, a statement that indicates the prescribed details relating to the previous disclosure; and (Amended 2 of 2001 s. 3) (g) an address in Hong Kong for service of documents. (3) Every such request shall also comply with the requirements of this Ordinance as to the provision of information in, or the translation of documents into, one or both official languages. (4) A filing fee and an advertisement fee shall be payable within 1 month after the earliest filing with the Registrar of any part of the request to record, and if either fee is not paid within that period or within such further period as may be allowed under subsection (5) the application for a standard patent shall be deemed to be withdrawn. (5) Rules may provide for a period of grace within which a filing fee or advertisement fee that has not been paid within the time limit specified in subsection (4) may still be validly paid. (6) Subsection (1) shall not apply in respect of a designated patent application published before the date on which the designated patent office was designated under section 8. (7) Nothing in this section shall preclude a request to record being initiated by documents complying with section 17. [cf. EPC Art. 78; 1977 c. 37 s. 14 U.K.] PATENTS ORDINANCE - SECT 16 Designated patent application based on international application VerDate:01/06/2002 Where a designated patent application is the national phase of an international application under the Patent Cooperation Treaty, then- (a) for the purposes of section 15(1), and notwithstanding section 5(2)(d)(ii), the date of publication of the designated patent application shall be- (i) the date of such publication in the designated patent office as serves to indicate that the international application has validly entered its national phase in the designated patent office; or (ii) such other date as may be prescribed in rules, being a date not earlier than the date on which the international application has validly entered its national phase in the designated patent office; (b) reference in section 15(2)(a) to a photocopy of the designated patent application shall be read as reference to- (i) a photocopy of the international application as published by the International Bureau; (ii) a photocopy of any translation of the international application published by the designated patent office; and (iii) a photocopy of any publication of information in the designated patent office concerning the international application; (c) (Repealed 2 of 2001 s. 4) (d) section 17(1)(c) shall have effect in such manner as may be specified in rules made for the purposes of this section. PATENTS ORDINANCE - SECT 17 Date of filing of request to record VerDate:01/06/2002 (1) Subject to subsection (2) and section 18(3), the date of filing a request to record shall be the earliest date on which documents filed by the applicant contain- (a) an indication that a request is made to record a designated patent application; (b) information identifying the applicant; and (c) a reference to the designated patent application, including- (i) the application number assigned to it by the designated patent office; and (ii) the publication number (if any) assigned to it by the designated patent office, and the date (if any) of its publication by the designated patent office. (Amended 2 of 2001 s. 5) (2) If the earliest filing with the Registrar of any part of a request to record occurs more than 6 months after the publication of the corresponding designated patent application the request shall not be dealt with as an application for a standard patent. [cf. EPC Art. 80] PATENTS ORDINANCE - SECT 18 Examination on filing of request to record VerDate:30/06/1997 (1) The Registrar shall examine whether- (a) the request to record satisfies the requirements of section 17(1) for the accordance of a date of filing (the "minimum requirements"); (b) the filing fee and advertisement fee have been paid in due time. (2) Subject to section 17(2), if a date of filing cannot be accorded because of deficiencies as regards the minimum requirements, the Registrar shall give the applicant an opportunity to correct the deficiencies in accordance with the rules. (3) If such deficiencies are not corrected within the prescribed time, the request shall not be dealt with as an application for a standard patent. [cf. EPC Art. 90] PATENTS ORDINANCE - SECT 19 Examination as to formal requirements of request to record VerDate:30/06/1997 (1) If a request to record has been accorded a date of filing and is not deemed to be withdrawn by virtue of section 15(4), the Registrar shall examine whether the requirements of section 15(2) and (3) ("the formal requirements") have been satisfied. (2) Where the Registrar notes that there are deficiencies as regards the formal requirements which may be corrected, he shall give the applicant an opportunity to correct them in accordance with the rules. (3) If- (a) there are deficiencies as regards the formal requirements which cannot be corrected the application for a standard patent shall be refused; (b) any deficiencies as regards the formal requirements noted in the examination are not corrected in accordance with the rules then, except as provided in subsection (4), the application for a standard patent shall be refused or, if no steps are taken to correct the deficiencies, shall be deemed to be withdrawn. (4) If a deficiency relating solely to a claim to any right of priority is not duly corrected, such right shall be lost for the application. [cf. EPC Art. 91] PATENTS ORDINANCE - SECT 20 Publication of request to record VerDate:07/05/2004 (1) If on an examination under section 19(1) a request to record is found to have satisfied the requirements of section 15(2) and (3), or if on a subsequent examination by the Registrar the deficiencies noted under section 19(2) are found to have been corrected in accordance with the rules, then the Registrar shall as soon as practicable after such examination, but subject to this section and section 37- (a) record the designated patent application in the register and enter particulars of the request to record in the register; (b) publish the request to record in the prescribed manner; (c) advertise the fact of such publication and entry by notice in the official journal; and (Amended 2 of 2001 s. 6; 2 of 2001 s. 14) (d) inform the applicant of the publication of the request to record. (2) A request to record shall not be published if- (a) before the completion of preparations for publication, it has been finally refused or withdrawn or has been deemed to have been withdrawn; or (b) the filing fee or advertisement fee has not been paid. (3) For the purposes of subsection (1)(b) the request to record shall include- (a) the designated patent application, including the description, the claims, any drawings and any search report or abstract published by the designated patent office and filed in the request to record; (b) the names of the proprietor and (if different) the inventor. PATENTS ORDINANCE - SECT 21 Registrar may publish additional matters VerDate:30/06/1997 In publishing a request to record under section 20(1)(b), the Registrar may publish such matters constituting or relating to the request which in the Registrar's opinion it is desirable to publish in addition to the matters specified in section 20(3). PATENTS ORDINANCE - SECT 22 Provision for request to record in the event of a divisional designated patent application VerDate:30/06/1997 (1) Where in an application for a standard patent- (a) a request to record has been published under section 20 and has not been refused, withdrawn or deemed to be withdrawn; and (b) the applicant for the corresponding designated patent application or his successor in title has filed in the designated patent office a divisional patent application ("a divisional corresponding designated patent application"), that is to say, an application for a patent which- (i) is in respect of the same subject-matter and does not extend beyond the contents of the corresponding designated patent application as filed in the designated patent office; (ii) has as its date of filing the date of filing of the corresponding designated patent application; and (iii) enjoys the same benefit of any right of priority as the corresponding designated patent application, the applicant may within 6 months after the date of publication of the divisional designated patent application or publication of the request to record under this Ordinance, whichever is the later, request the Registrar to enter a record of that divisional designated patent application in the register. (2) Where a request to record a divisional designated patent application is filed under this section- (a) it shall be deemed to have been filed on the date of filing of the earlier request to record and the application for a standard patent shall have the benefit of any right of priority; (b) subject to paragraph (a), the provisions of this Ordinance shall apply to such a request as they apply to a request to record filed under section 15(1). (3) For the purpose of the application of the other provisions of this Ordinance to this section- (a) any reference in those other provisions to a corresponding designated patent application shall be read as a reference to the divisional designated patent application mentioned in subsection (1)(b); (b) any reference in those other provisions to a corresponding designated patent shall be read as a reference to the designated patent granted in pursuance of the divisional designated patent application. [cf. EPC Art. 76; 1992 No. 1 s. 24 Eire; 1977 c. 37 s. 15 U.K.] PATENTS ORDINANCE - SECT 23 Filing of request for registration and grant VerDate:30/06/1997 Request for registration and grant (1) Where in an application for a standard patent- (a) a designated patent application has been recorded in the register and a request to record has been published and the request to record is not refused or deemed withdrawn or abandoned (whether under this Part or Part III); and (b) a patent has been granted in the designated patent office in pursuance of the designated patent application, the applicant or his successor in title may, subject to subsection (2), request the Registrar to register the designated patent so granted and to grant a standard patent for the invention shown in the published specification of the designated patent (in this Ordinance referred to as a "request for registration and grant"). (2) A request for registration and grant under subsection (1) shall be made within 6 months after the date of grant of the designated patent by the designated patent office or publication of the request to record, whichever is the later. (3) Every such request shall be filed with the Registrar in the prescribed manner and shall contain- (a) a verified copy of the published specification of the designated patent, including the description, the claims and any drawings published by the designated patent office; (b) if the person filing the request is a person other than the person named in the register as the applicant for a standard patent for the invention, a statement explaining the first-mentioned person's entitlement to apply for the grant of a standard patent for the invention and prescribed documents supporting that statement; (c) where the request to record contains a statement under section 15(2)(e) to the effect that priority is claimed on the basis of a right of priority claimed in the designated patent office, such copies as may be prescribed of the documents filed in the designated patent office claiming and supporting such right of priority. (4) Every such request shall also comply with the requirements of this Ordinance as to the provision of information in, or the translation of documents into, one or both official languages. (5) A filing fee and an advertisement fee shall be payable within 1 month after the earliest filing of a part of the request for registration and grant, and if either fee is not paid within that period or within such further period as may be allowed under subsection (6) the application for a patent shall be deemed to be withdrawn. (6) Rules may provide for a period of grace within which a filing fee or advertisement fee that has not been paid within the time limit specified in subsection (5) may still be validly paid. (7) Nothing in this section shall preclude a request for registration and grant being initiated in accordance with section 24. PATENTS ORDINANCE - SECT 24 Date of filing request for registration and grant VerDate:30/06/1997 (1) Subject to subsection (2) and section 25(3), the date of filing of a request for registration and grant shall be the earliest date on which documents filed by the applicant contain- (a) an indication that a request is made for the registration of a designated patent and the grant of a standard patent; (b) information identifying the applicant; (c) the publication number assigned to the designated patent by the designated patent office, and the date of its publication; and (d) the publication number assigned to the request to record by the Registrar. (2) If the earliest filing with the Registrar of any part of a request for registration and grant occurred more than 6 months after the later of- (a) the date of grant of the designated patent; and (b) publication of the request to record in accordance with section 20, then the application shall be deemed to be withdrawn. PATENTS ORDINANCE - SECT 25 Examination on filing of request for registration and grant VerDate:30/06/1997 (1) The Registrar shall examine whether- (a) the request for registration and grant satisfies the requirements of section 24(1) for the accordance of a date of filing; and (b) the filing fee and advertisement fee have been paid in due time. (2) Subject to section 24(2), if on examination under subsection (1)(a) a date of filing cannot be accorded because of deficiencies as regards the requirements mentioned in subsection (1)(a), the Registrar shall give the applicant an opportunity to correct the deficiencies in accordance with the rules. (3) If- (a) there are deficiencies as regards the requirements specified in section 24(1) which cannot be corrected the application for a standard patent shall be refused; (b) any deficiencies as regards those requirements noted in the examination under subsection (1) are not corrected in accordance with the rules, the application for a standard patent shall be refused or, if no steps are taken to correct the deficiencies, shall be deemed to be withdrawn. PATENTS ORDINANCE - SECT 26 Examination as to formal requirements of the request for registration and grant VerDate:30/06/1997 (1) If a request for registration and grant has been accorded a date of filing and is not deemed to be withdrawn by virtue of section 23(5), the Registrar shall examine whether the requirements of section 23(3) and (4) ("the formal requirements") have been satisfied. (2) Where the Registrar notes that there are deficiencies as regards the formal requirements which may be corrected, he shall give the applicant an opportunity to correct them in accordance with the rules. (3) If- (a) there are deficiencies as regards the formal requirements which cannot be corrected the application for a standard patent shall be refused; (b) any deficiencies as regards the formal requirements noted in the examination are not corrected in accordance with the rules then, except as provided in subsection (4), the application for a standard patent shall be refused or, if no steps are taken to correct the deficiencies, shall be deemed to be withdrawn. (4) If a deficiency relating solely to a claim to any right of priority is not duly corrected then such right shall be lost for the application. [cf. EPC Art. 91] PATENTS ORDINANCE - SECT 27 Registration of designated patent and grant of patent VerDate:07/05/2004 (1) If on examination under section 26(1) a request for registration and grant is found to have satisfied the requirements of section 23(3) and (4) or if on a subsequent examination the deficiencies noted under section 26(2) are found to have been corrected in accordance with the rules, then the Registrar shall as soon as practicable after such examination, but subject to section 37- (a) register the designated patent by making an appropriate entry in the register; and (b) grant a standard patent for the invention shown in the published specification of the designated patent as filed under section 23(3)(a) and issue a certificate to that effect. (2) A patent shall not be granted under this section unless the filing fee and advertisement fee specified in section 23 and any other fees payable under the preceding provisions of this Part have been paid. (3) As soon as practicable after a standard patent has been granted under this section the Registrar shall- (a) publish in the prescribed manner the specification of the patent, the names of the proprietor and, if different, the inventor; (b) send the certificate issued under subsection (1)(b) to the proprietor; and (c) advertise the fact of such grant by notice in the official journal. (Amended 2 of 2001 s. 14) (4) In publishing under subsection (3)(a) any matters specified in that subsection, the Registrar may publish in addition such other matters constituting or relating to the patent which in his opinion it is desirable to publish. PATENTS ORDINANCE - SECT 28 Further processing of application for standard patent VerDate:30/06/1997 Further processing; restoration of rights (1) Subject to this section, where- (a) an application for a standard patent, or any part of an application, is refused or is deemed withdrawn following the applicant's failure to comply with a time limit under this Part (including any time limit set by the Registrar); and (b) the applicant has by notice filed with the Registrar requested reinstatement of the application or part of the application, then the legal consequence of the failure to comply with the time limit, as provided under the Ordinance, shall not ensue or, if it has already ensued, shall be retracted. (2) A notice under this section- (a) shall be in writing and shall be filed within 2 months after such refusal or deemed withdrawal; (b) shall not be deemed to be filed unless the additional prescribed fee has been paid; and (c) shall not be deemed to be filed unless the omission which constituted the failure to comply with a time limit has been made good. (3) This section does not apply in the case of the refusal or deemed withdrawal of an application under section 15(4), 23(5), 24(2) or 25(3). (4) The Registrar may by regulation amend the period specified in subsection (2)(a) within which a notice under this section shall be filed. [cf. EPC Art. 121] PATENTS ORDINANCE - SECT 29 Restoration of rights VerDate:07/05/2004 (1) Subject to this section, where- (a) an applicant for a standard patent has failed to comply with a time limit under this Part (including any time limit set by the Registrar); and (b) the Registrar is satisfied that the failure to comply with the time limit occurred in spite of the applicant having taken all reasonable care required by the circumstances, then upon application by the applicant to the Registrar under this section for restoration of his rights lost- (i) any refusal or deemed withdrawal of the application that occurred as a direct consequence of the failure to comply with the time limit shall be deemed to be of no effect and the application shall be treated for the purposes of proceedings under this Part as if there had been no such failure; (ii) any right or means of redress lost by the applicant as a direct consequence of the failure to comply with the time limit shall be restored to the applicant. (2) An application under this section- (a) shall be in writing and shall be made not later than- (i) 1 year after the expiry of the time limit referred to in subsection (1)(a); or (ii) 2 months after the removal of the cause of non-compliance with the time limit, whichever is the earlier; (b) shall not be deemed to be filed unless the additional prescribed fee has been paid; and (c) shall not be deemed to be made unless the omission which constituted the failure to comply with a time limit has been made good. (3) Where prior to the refusal or deemed withdrawal of the application mentioned in subsection (1)(i) the request to record had been published under section 20, the Registrar shall advertise in the official journal notice of any application under subsection (1). (Amended 2 of 2001 s. 14) (4) The Registrar may by regulation amend the periods specified in subsection (2)(a) within which a notice under this section shall be filed. (5) This section does not apply to any failure to comply with a time limit under section 15 (except as regards any time limit specified for the purposes of section 15(3)), 17(2), 18, 19, 22, 23(5), 24(2) or 25(3). [cf. EPC Art. 122] PATENTS ORDINANCE - SECT 30 Effect of restoration of rights under section 29 VerDate:07/05/2004 (1) The effect of a restoration under section 29 is as follows. (2) A person who, during the period between the loss of rights referred to in section 29(1) and the advertisement in the official journal of notice of the application for restoration under section 29(3)- (Amended 2 of 2001 s. 14) (a) does in good faith an act which would constitute an infringement of the applicant's rights under the published application for a standard patent if those rights had not been lost; or (b) makes in good faith effective and serious preparations to do such an act, has the rights specified in subsection (3). (3) The rights referred to in subsection (2) are- (a) the right to continue to do or, as the case may be, to do the act referred to in subsection (2); (b) if such act was done or preparations had been made to do it in the course of a business- (i) in the case of an individual- (A) the right to assign the right to do it or to transmit such right on death; or (B) the right to authorize the doing of that act by any of his partners for the time being in the business in the course of which the act was done or preparations had been made to do it; (ii) in the case of a body corporate, the right to assign the right to do it or to transmit such right on the body's dissolution, and the doing of that act by virtue of this subsection shall not amount to an infringement of the applicant's rights under the published application for a patent concerned. (4) The rights specified in subsection (3) shall not include the right to grant a licence to any person to do an act referred to in subsection (2). (5) Where a product is disposed of to another in exercise of a right conferred by subsection (3), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the applicant in the patent application. [cf. 1992 No. 1 s. 55(2) to (4) Eire] PATENTS ORDINANCE - SECT 31 Amendment of application for standard patent VerDate:30/06/1997 PART III PROVISIONS AS TO APPLICATIONS FOR STANDARD PATENTS BEFORE GRANT (1) Subject to this section and sections 36 and 103, an applicant for a standard patent may at any time before a standard patent is granted pursuant to the application, in accordance with the prescribed conditions, amend the application of his own volition. (2) No amendment may be made under subsection (1) to the title of the invention, the abstract, a priority claim or any claim, description or drawing unless- (a) the application has been published; and (b) the amendment is an amendment that has been made to the corresponding designated patent application. (3) Upon receipt of particulars of an amendment filed in accordance with subsections (1) and (2) the Registrar shall record the amendment. PATENTS ORDINANCE - SECT 32 Withdrawal of application VerDate:30/06/1997 (1) Subject to section 36, an applicant for a standard patent may at any time before a standard patent is granted pursuant to the application withdraw in writing his application and any such withdrawal may not be revoked. (2) Where a patent application is withdrawn under this section, or is deemed under this Ordinance to have been withdrawn, or is refused under any provision of this Ordinance, then- (a) if the application has been published, section 94(3) shall continue to apply as regards the application; (b) the applicant shall continue to enjoy the right of priority under section 98 which he enjoyed immediately before such withdrawal or refusal; (c) no other right may be claimed under this Ordinance in relation to the application PATENTS ORDINANCE - SECT 33 Maintaining application for standard patent VerDate:01/07/1997 Amendments retroactively made - see 22 of 1999 s. 3 (1) This section applies to an application for a standard patent which has been published but in which no request has been made for registration and grant under section 23. (2) If it is desired to maintain a patent application to which this section applies for a further year after the expiry of the 5th or any succeeding year from the date specified in subsection (3), the applicant shall, before the expiry of that 5th or succeeding year (as the case may be), but not earlier than a date 3 months before that expiry, apply to the Registrar in the prescribed manner for the maintenance of the patent application ("maintenance application") and pay the prescribed fee ("maintenance fee") and a patent application to which this section applies shall be deemed to be withdrawn and abandoned at the expiry of that 5th or succeeding year if the maintenance application is not so made or the maintenance fee is not so paid. (3) The date specified for the purpose of subsection (2) is the anniversary of the date of filing the corresponding designated patent application first occurring after the date of publishing the request to record. (4) If, within 6 months after the end of the period specified in subsection (2) for the making of a maintenance application, an application is made under subsection (2) and the maintenance fee and any prescribed additional fee are paid in the prescribed manner then the patent application shall be treated as if it had not been withdrawn or abandoned. (5) If statements contained in the maintenance application indicate- (a) that as at a date specified in the application, being a date not earlier than 1 month before the date of making the application- (i) the designated patent application has not been withdrawn or abandoned for the purposes of the law of the designated patent office; and (ii) there has been no final refusal by the designated patent office to grant a patent pursuant to the designated patent application; and (b) that- (i) as at the date specified for the purposes of paragraph (a) a patent had not been granted pursuant to the designated patent application; or (ii) a patent has been granted pursuant to the designated patent application, and the date of such grant is a date within 6 months before the date of the application, the Registrar shall, subject to subsection (9), maintain the application for a patent. (6) Where a statement contained in a maintenance application indicates that a designated patent has been granted on a date within the 6 months before the date of the maintenance application, any maintenance of the patent application by virtue of subsection (5) shall have effect for a term ending 6 months after the date of such grant. (7) If there are deficiencies in the maintenance application that may be corrected the Registrar shall give the applicant an opportunity to correct them in accordance with the rules. (8) If the Registrar is not satisfied as to the veracity of a statement in the maintenance application, he shall notify the applicant accordingly giving reasons and shall allow the applicant an opportunity to make further statements or adduce material for the purpose of so satisfying him. (9) If in an application under this section- (a) statements contained in the application indicate that- (i) the designated patent application has been withdrawn or abandoned pursuant to the law of the designated patent office; (ii) the designated patent office has finally refused the grant of a patent in pursuance of the designated patent application; or (iii) a designated patent has been granted in pursuance of the designated patent application, and the date of such grant was a date more than 6 months before the date of the application; (b) deficiencies as noted by the Registrar are not corrected in accordance with the rules; or (c) the applicant has failed to satisfy the Registrar as to the veracity of a statement in respect of which notice has been given under subsection (8), the Registrar shall refuse to maintain the application for a patent and upon such refusal that application shall be deemed to be withdrawn or abandoned. (10) The Registrar may by regulation amend the period specified in subsection (2) by reference to which the earliest date for making a maintenance application under that subsection is determined. (11) The Chief Executive in Council may by regulation amend the period specified in subsection (2) as being the period after which a standard patent application not maintained shall be deemed to be withdrawn and abandoned. (Amended 22 of 1999 s. 3) [cf. EPC Art. 86] PATENTS ORDINANCE - SECT 34 Restoring application for standard patent VerDate:07/05/2004 (1) Where an application for a standard patent is deemed withdrawn under section 33 by reason only of the failure to pay any maintenance fee under that section within the period specified then the applicant may, within 12 months after the date on which the application was deemed withdrawn and on payment of the prescribed fee, apply to the Registrar in the prescribed manner for the restoration of the application for a standard patent. (2) The Registrar shall advertise in the official journal notice of any application under subsection (1). (Amended 2 of 2001 s. 14) (3) If on an application under subsection (1)- (a) the Registrar is satisfied that the failure to pay the maintenance fee within the specified period, or that fee and any additional fee under section 33(4) within 6 months after the end of the specified period, occurred in spite of the applicant having taken all reasonable care required by the circumstances; and (b) the requirements of subsection (4) are met, the Registrar shall order that the request to record be restored on payment of any such unpaid maintenance fee and additional fee. (4) An order for restoration shall not be made under subsection (3) unless it appears to the Registrar that at the date of the application for restoration- (a) the designated patent application is still valid and not withdrawn; and (b) a patent has not been granted in pursuance of that application or, if granted, the time for filing a request for registration and grant under section 23 has not expired. [cf. EPC Art. 122] PATENTS ORDINANCE - SECT 35 Effect of restoration order under section 34 VerDate:07/05/2004 (1) The effect of a restoration under section 34(4) is as follows. (2) A person who, during the period between any deemed withdrawal such as is mentioned in section 34(1) and the advertisement in the official journal of notice of the application for restoration under section 34(2)- (Amended 2 of 2001 s. 14) (a) does in good faith an act which would constitute an infringement of the applicant's rights under the published application for a patent if those rights had not been lost; or (b) makes in good faith effective and serious preparations to do such an act, has the rights specified in subsection (3). (3) The rights referred to in subsection (2) are- (a) the right to continue to do or, as the case may be, to do the act referred to in subsection (2); (b) if such act was done or preparations had been made to do it in the course of a business- (i) in the case of an individual- (A) the right to assign the right to do it or to transmit such right on death; or (B) the right to authorize the doing of that act by any of his partners for the time being in the business in the course of which the act was done or preparations had been made to do it; (ii) in the case of a body corporate, the right to assign the right to do it or to transmit such right on the body's dissolution, and the doing of that act by virtue of this subsection shall not amount to an infringement of the applicant's rights under the published application for a patent concerned. (4) The rights specified in subsection (3) shall not include the right to grant a licence to any person to do an act referred to in subsection (2). (5) Where a product is disposed of to another in exercise of a right conferred by subsection (3), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the applicant in the patent application. (6) This section applies in relation to the Government use of an invention in respect of which an application has been made as it applies in relation to infringement of the rights conferred by publication of an application for a standard patent for the invention. [cf. 1992 No. 1 s. 55(2) to (4) Eire] PATENTS ORDINANCE - SECT 36 Limitation on withdrawal, amendment, etc. of application VerDate:30/06/1997 No withdrawal of an application under section 32, no request to enter a record of a divisional application under section 22(1) nor any amendment under section 31 shall be allowed after the date on which preparations for publication under section 27(3) of the specification of a standard patent to be granted in pursuance of the application have been completed. PATENTS ORDINANCE - SECT 37 Registrar may refuse to record under section 20 or to register and grant under section 27 VerDate:30/06/1997 (1) The Registrar may refuse to record a designated patent application under section 20(1) or to register a designated patent under section 27 if he considers that the invention the subject of the application for the standard patent is not a patentable invention by reason of any of the matters specified in section 93(5). (2) The Registrar shall give notice in writing to the applicant of any such refusal. PATENTS ORDINANCE - SECT 38 Deemed date of filing where standard patent has been granted VerDate:30/06/1997 PART IV PROVISIONS AS TO PATENTS AFTER GRANT Standard patents Where a standard patent is granted, the application for the standard patent shall be deemed to have as its date of filing the date of filing of the corresponding designated patent application, and in this Ordinance "deemed date of filing" (當作提交日期) in relation to an application for a standard patent shall be construed accordingly. "deemed date of filing" (當作提交日期) PATENTS ORDINANCE - SECT 39 Term of standard patent VerDate:07/05/2004 (1) A standard patent granted under this Ordinance- (a) shall take effect from the date on which the fact of its grant is advertised in the official journal; and (Amended 2 of 2001 s. 14) (b) subject to subsection (2), shall remain in force until the end of the period of 20 years beginning with the deemed date of filing of the application for the patent. (2) If it is desired to keep a standard patent in force for a further year after the expiry of the 3rd or any succeeding year from the date specified in subsection (3), the prescribed renewal fee shall be paid before the expiry of that 3rd or, as the case may be, succeeding year, but not earlier than a date 3 months before that expiry, and a standard patent shall cease to have effect at the expiry of that 3rd or succeeding year if the renewal fee is not so paid. (3) The date specified for the purpose of subsection (2) is the anniversary of the deemed date of filing of the standard patent first occurring after the date of grant of the patent. (4) If within 6 months after the end of the period specified in subsection (2) for payment of the renewal fee the renewal fee and any prescribed additional fee are paid, the standard patent shall be treated as if it had never expired, and accordingly- (a) anything done under or in relation to it during that further period shall be valid; (b) an act which would constitute an infringement of it if it had not expired shall constitute such an infringement; and (c) an act which would constitute Government use of the patented invention if the patent had not expired shall constitute that use. (5) The Registrar may by regulation amend the period specified in subsection (2) by reference to which the earliest date for payment of the prescribed renewal fee is determined. (6) The Chief Executive in Council may by regulation amend- (Amended 22 of 1999 s. 3) (a) the period specified in subsection (1)(b) as being the period for which a standard patent shall remain in force; (b) the period specified in subsection (2) by reference to which a standard patent, if not renewed, shall cease to have effect. [cf. 1977 c. 37 s. 25 U.K.] PATENTS ORDINANCE - SECT 40 Restoration of lapsed standard patents VerDate:07/05/2004 (1) Where a standard patent has ceased to have effect by reason of the failure to pay any renewal fee as provided in section 39, application may be made to the Registrar, at any time within 18 months after the date on which the patent ceased to have effect, for the restoration of the patent. (2) An application under this section may be made by the person who was the proprietor of the standard patent at the time it ceased to have effect or by any other person who would have been entitled to the patent if it had not ceased to have effect; and where the patent was at that time held by 2 or more persons jointly the application may, with the leave of the Registrar, be made by one or more of them without joining the others. (3) The Registrar shall advertise in the official journal notice of any application under this section. (Amended 2 of 2001 s. 14) (4) If the Registrar is satisfied that the failure to pay any renewal fee as provided in section 39, or to pay that fee and any additional fee under that section within 6 months after the end of that period, occurred in spite of the applicant having taken all reasonable care required by the circumstances the Registrar shall by order restore the patent on payment of any such unpaid renewal fee and any prescribed additional fee. (5) An order under this section may be made subject to such terms and conditions as the Registrar thinks fit. [cf. 1949 c. 87 s. 28 U.K.; 1977 c. 37 s. 28 U.K.; EPC Art. 122] PATENTS ORDINANCE - SECT 41 Effect of order for restoration of standard patent VerDate:07/05/2004 (1) The effect of an order for the restoration of a standard patent is as follows. (2) Anything done during the period between expiry and restoration which would have constituted an infringement if the patent had not expired shall be treated as an infringement- (a) if done at a time when it was possible for the patent to be renewed under section 39(4); or (b) if it was a continuation or repetition of an earlier infringing act. (3) A person who in Hong Kong, after it was no longer possible for the patent to be so renewed and before advertisement in the official journal of notice of an application for restoration under section 40- (Amended 2 of 2001 s. 14) (a) began in good faith to do an act which would constitute an infringement of the patent if it were in force; or (b) made in good faith effective and serious preparations to do such an act, has the rights specified in subsection (4). (4) The rights referred to in subsection (3) are- (a) the right to continue to do or, as the case may be, to do the act referred to in subsection (3); (b) if such act was done or preparations had been made to do it in the course of a business- (i) in the case of an individual- (A) the right to assign the right to do it or to transmit such right on death; or (B) the right to authorize the doing of that act by any of his partners for the time being in the business in the course of which the act was done or preparations had been made to do it; (ii) in the case of a body corporate, the right to assign the right to do it or to transmit such right on the body's dissolution, and the doing of that act by virtue of this subsection shall not amount to an infringement of the patent concerned. (5) The rights specified in subsection (4) shall not include the right to grant a licence to any person to do an act referred to in subsection (3). (6) Where a patented product is disposed of to another in exercise of a right conferred by subsection (4), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by a registered proprietor of the patent. [cf. 1992 No. 1 s. 55(2) to (5) Eire] PATENTS ORDINANCE - SECT 42 Determination after grant of questions referred before grant VerDate:30/06/1997 (1) If a question with respect to a standard patent or application for a standard patent is referred by any person to the Registrar or the court under section 13, whether before or after the making of an application for the patent, and is not determined before the time when the application is first in order for a grant of a patent in pursuance of the application, that fact shall not prevent the grant of a standard patent, but on its grant that person shall be treated as having referred to the Registrar or the court under section 55 any question mentioned in that section which the Registrar or the court thinks appropriate. (2) In determining any such question under section 55 the Registrar shall exercise only the powers that are available to him for the purposes of determining the same question referred to him under section 13. [cf. 1977 c. 37 s. 9 U.K.] PATENTS ORDINANCE - SECT 43 Amendment of standard patent following opposition or revocation proceedings in the designated patent office VerDate:07/05/2004 (1) If the specification of the corresponding designated patent in respect of a standard patent granted under Part II has (whether before or after the grant of the standard patent) been amended in the designated patent office following prescribed opposition or revocation proceedings, the proprietor of the standard patent shall file with the Registrar in the prescribed manner and within the prescribed period a verified copy of the amended specification or the amending order or other prescribed documentation. (2) The Registrar shall record the amendment to the specification of the designated patent by making an appropriate entry in the register and upon that recording the standard patent shall be treated as having been amended in a like manner. (3) As soon as practicable after a standard patent has been amended under this section the Registrar shall- (a) publish the amendment; (b) advertise the fact of the amendment by notice in the official journal. (Amended 2 of 2001 s. 14) (4) Any amendment of the specification of a standard patent under this section shall have effect from the date of grant of the patent. (5) Any amendment of the specification of a standard patent under this section shall have effect subject to section 103. [cf. EPC Art. 102] PATENTS ORDINANCE - SECT 44 Revocation of standard patent following opposition or revocation proceedings in the designated patent office VerDate:07/05/2004 (1) This section applies to any standard patent of which the corresponding designated patent has been revoked following prescribed opposition or revocation proceedings in the designated patent office. (2) The proprietor of a patent to which this section applies shall after publication of the revocation by the designated patent office and in the prescribed manner file with the Registrar a verified copy of the order of revocation or other prescribed documentation. (3) The Registrar shall record any filing under subsection (2) and shall advertise the fact of such filing by notice in the official journal. (Amended 2 of 2001 s. 14) (4) A person other than the proprietor of a patent to which this section applies may apply to the Registrar in the prescribed manner for an order under this subsection, and where on such an application the Registrar is satisfied that the patent is one to which this section applies he shall, subject to subsection (5), order that the patent be revoked. (5) The Registrar may, if he thinks fit, refer any application under subsection (4) to the court and the court shall have jurisdiction to make an order for the revocation of the patent. (6) Upon the Registrar advertising the fact of a filing by the proprietor of a patent under subsection (2) in the official journal, or upon the making of an order by the Registrar under subsection (4) or by the court under subsection (5) for the revocation of a patent, the patent shall be treated as never having had effect. (Amended 2 of 2001 s. 14) [cf. EPC Art. 102] PATENTS ORDINANCE - SECT 45 Mention of inventor VerDate:30/06/1997 Patents generally (1) The inventor or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention. (2) Where a person has been mentioned in a patent as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time after the grant of the patent request the Registrar to make a finding to that effect; and if the Registrar makes such a finding he shall accordingly amend the register and any undistributed copies of the patent, and may issue a certificate to the effect of his finding. [cf. 1977 c. 37 s. 13 U.K.; 1992 No. 1 s. 17 Eire] PATENTS ORDINANCE - SECT 46 General power to amend specification after grant VerDate:07/05/2004 (1) Subject to section 103, the proprietor of a patent granted under this Ordinance may apply to the court to amend the specification of the patent and the court may by order allow any such amendment subject to such conditions as it thinks fit. (2) No such amendment shall be allowed if there are pending before the court proceedings in which the validity of the patent may be put in issue. (3) An amendment of a specification of a patent under this section shall have effect and be deemed always to have had effect as from the grant of the patent. (4) Any person wishing to oppose an application under this section may, in accordance with rules of court, give to the court notice of opposition; and the court shall consider the opposition in deciding whether to grant the application. (5) Upon receipt of the court order and supporting documents filed in the prescribed manner the Registrar shall record the amendments to the specification of the patent and shall publish this and advertise the fact by notice in the official journal. (Amended 2 of 2001 s. 14) (6) The Registrar may, without any application being made to the court or to him for the purpose, amend the specification of a patent so as to acknowledge a registered trade mark. (7) Rules of court may provide for the notification of any application under this section to the Registrar and for his appearance on the application and for giving effect to any order of the court on the application. [cf. 1977 c. 37 s. 27 U.K.] PATENTS ORDINANCE - SECT 47 Patent not to be impugned for lack of unity VerDate:30/06/1997 No person may in any proceedings object to a patent or to an amendment of a specification of a patent on the ground that the claims contained in the specification of the patent, as they stand or, as the case may be, as proposed to be amended, relate- (a) to more than one invention; or (b) to a group of inventions which are not so linked as to form a single inventive concept. [cf. 1977 c. 37 s. 26 U.K.] PATENTS ORDINANCE - SECT 48 Surrender of patents VerDate:07/05/2004 (1) The proprietor of a patent may at any time by written notice given to the Registrar offer to surrender his patent. (2) Any person may give notice to the Registrar of his opposition to the surrender of a patent under this section, and if he does so the Registrar shall notify the proprietor of the patent and, subject to subsection (4), shall determine the question. (3) If the Registrar is satisfied that the patent may properly be surrendered he may accept the offer and, as from the date on which notice of his acceptance is advertised in the official journal, the patent shall cease to have effect, but no action for infringement shall lie in respect of any act done before that date and no right to compensation shall accrue for any Government use of the patented invention before that date. (Amended 2 of 2001 s. 14) (4) The Registrar may if he thinks fit refer the matter to the court for determination. [cf. 1977 c. 37 s. 29 U.K.] PATENTS ORDINANCE - SECT 49 Registrar's power to revoke patent on grounds of "ordre public" or morality VerDate:30/06/1997 (1) Any person may at any time after a patent has been granted for an invention under this Ordinance refer to the Registrar the question of whether, having regard to any of the matters specified in section 93(5), the invention is a patentable invention. (2) Where a question is so referred- (a) subject to paragraph (b), the Registrar shall determine the question; (b) the Registrar may if he thinks fit refer the question to be determined by the court and, without prejudice to the court's jurisdiction apart from this paragraph to determine any such question, the court shall have jurisdiction to do so. (3) If the Registrar or the court determines that the invention is not a patentable invention by reason of any of the matters specified in section 93(5) he or it shall order that the patent shall be revoked and upon the making of such an order the patent shall be treated as never having had effect. (4) Any person may oppose a reference under subsection (2). PATENTS ORDINANCE - SECT 50 Nature of, and transactions in, patents and applications for patents VerDate:30/06/1997 PART V PROPERTY IN PATENTS AND APPLICATIONS; REGISTRATION (1) Any patent or application for a patent is personal property (without being a thing in action), and any patent or any such application and rights in or under it may be transferred, created or granted in accordance with subsections (2) to (7). (2) Subject to section 54, any patent or any such application, or any right in it, may be assigned or mortgaged. (3) Any patent or any such application or right shall vest by operation of law in the same way as any other personal property and may be vested by an assent of personal representatives. (4) Subject to section 54, a licence may be granted under any patent or any such application for working the invention which is the subject of the patent or the application; and- (a) to the extent that the licence so provides, a sub-licence may be granted under any such licence and any such licence or sub-licence may be assigned or mortgaged; and (b) any such licence or sub-licence shall vest by operation of law in the same way as any other personal property and may be vested by an assent of personal representatives. (5) Subsections (2) to (4) shall have effect subject to this Ordinance. (6) Any of the following transactions, that is to say- (a) any assignment or mortgage of a patent or any such application, or any right in a patent or any such application; (b) any assent relating to any patent or any such application or right, shall be void unless it is in writing and is signed by or on behalf of the assignor, mortgagor or party granting such assent as the case may be (or, in the case of an assent or other transaction by a personal representative, by or on behalf of the personal representative) or in the case of a body corporate is so signed or is under the seal of that body. (7) An assignment of a patent or any such application or a share in it, and an exclusive licence granted under any patent or any such application, may confer on the assignee or licensee the right of the assignor or licensor to bring proceedings by virtue of section 80 or 88 for a previous infringement or to bring proceedings under section 72 for a previous act. [cf. 1977 c. 37 s. 30 U.K.] PATENTS ORDINANCE - SECT 51 Register of patents VerDate:01/06/1999 (1) The Registrar shall keep a register to be known as the register of patents, which shall comply with rules made for the purposes of this section and shall be kept in accordance with such rules. (2) Without prejudice to any other provision of this Ordinance- (a) rules shall be made providing for the registration of- (i) patents and of published applications for standard patents; and (ii) transactions, instruments or events affecting rights in or under patents and published applications for standard patents; (b) rules made for the purposes of this section may provide, in connection with rules made for the purposes of paragraph (a), for- (i) the furnishing to the Registrar of any prescribed documents or description of documents in connection with any matter which is required to be registered; (ii) the correction of errors in the register and in any documents filed with the Registrar in connection with registration; and (iii) the publication and advertisement of anything done under this Ordinance in relation to the register; and (c) rules made for the purposes of this section may provide for notification to the Registrar of any matter affecting the property in an application for a patent. (3) Notwithstanding subsection (2)(a)(ii), no notice of any trust, whether express, implied or constructive, shall be entered in the register and the Registrar shall not be affected by any such notice. (4) The register need not be kept in documentary form. (5) Subject to any rules, the public shall have a right to inspect the register at the registry at all convenient times. (6) Any person who applies for a certified copy of an entry in the register or a certified extract from the register shall be entitled to obtain such a copy or extract on payment of a fee prescribed in relation to certified copies and extracts; and rules may provide that any person who applies for an uncertified copy or extract shall be entitled to such a copy or extract on payment of a fee prescribed in relation to uncertified copies and extracts. (7) Applications under subsection (6) or rules made by virtue of that subsection shall be made in such manner as may be prescribed. (8) In relation to any portion of the register kept otherwise than in documentary form- (a) the right of inspection conferred by subsection (5) is a right to inspect the material on the register; and (b) the right to a copy or extract conferred by subsection (6) or rules is a right to a copy or extract in a form in which it can be taken away and in which it is visible and legible. (9) Subject to subsection (12), the register shall be prima facie evidence of anything required or authorized by this Ordinance to be registered. (10) A certificate purporting to be signed by the Registrar and certifying that any entry which he is authorized by this Ordinance to make has or has not been made, or that any other thing which he is so authorized to do has or has not been done, shall be prima facie evidence of the matters so certified. (11) Each of the following, that is to say- (a) a copy of an entry in the register or an extract from the register which is supplied under subsection (6); (b) a copy of any document kept at the registry or an extract from any such document, any specification of a patent or any application for a standard patent which has been published, which purports to be a certified copy or a certified extract shall, subject to subsection (12), be admitted in evidence without further proof and without production of any original. (12) This section is without prejudice to section 22A or 22B or Part IV of the Evidence Ordinance (Cap 8) or any provision made by virtue of that section or Part. (Replaced 2 of 1999 s. 6) (13) In this section "certified copy" (核證副本) and "certified extract" (核證摘錄) mean a copy and extract certified by the Registrar and sealed with the seal of the Registrar. [cf. 1977 c. 37 s. 32 U.K.] "certified copy" (核證副本) and "certified extract" (核證摘錄) PATENTS ORDINANCE - SECT 52 Effect of registration procedures on rights in patents VerDate:30/06/1997 (1) Any person who claims to have acquired the property in a patent or application for a patent by virtue of any transaction, instrument or event to which this section applies shall be entitled as against any other person who claims to have acquired that property by virtue of an earlier transaction, instrument or event to which this section applies if, at the time of the later transaction, instrument or event- (a) either- (i) application has not been made for registration of the earlier transaction, instrument or event; or (ii) in the case of any application for a standard patent which has not been published or any application for a short-term patent, notice of the earlier transaction, instrument or event has not been given to the Registrar in accordance with rules (if any) made for the purposes of section 51(2)(c); and (b) the person claiming under the later transaction, instrument or event did not know of the earlier transaction, instrument or event. (2) Subsection (1) shall apply equally to the case where any person claims to have acquired any right in or under a patent or application for a patent by virtue of a transaction, instrument or event to which this section applies, and that right is incompatible with any such right acquired by virtue of an earlier transaction, instrument or event to which this section applies. (3) This section applies to the following transactions, instruments and events- (a) the assignment of a patent or application for a patent, or a right in it; (b) the mortgage of a patent or application or the granting of security over it; (c) the grant or assignment of a licence or sub-licence or mortgage of a licence or sub-licence under a patent or application; (d) the death of the proprietor or one of the proprietors of any such patent or application or any person having a right in or under a patent or application and the vesting by an assent of personal representatives of a patent, application or any such right; and (e) any order or directions of a court or other competent authority transferring a patent or application or any right in or under it to any person and the event by virtue of which the court or authority had power to make any such order or give any such directions. [cf. 1977 c. 37 s. 33 U.K.] PATENTS ORDINANCE - SECT 53 Rectification of register VerDate:30/06/1997 (1) The court may, on the application of any person aggrieved, order the register to be rectified by the making, or the variation or deletion, of any entry in it. (2) In proceedings under this section the court may determine any question which it may be necessary or expedient to decide in connection with the rectification of the register. [cf. 1977 c. 37 s. 34 U.K.] PATENTS ORDINANCE - SECT 54 Co-ownership of patents and applications for patents VerDate:30/06/1997 (1) Where a patent is granted to 2 or more persons each of them shall, subject to any agreement to the contrary, be entitled to an equal undivided share in the patent. (2) Where 2 or more persons are proprietors of a patent, then, subject to this section and to any agreement to the contrary, each of them shall be entitled, by himself or his agent, to do in respect of the invention concerned, for his own benefit and without the consent of or the need to account to the other or others, any act which would apart from this subsection and sections 68 and 69 amount to an infringement of the patent concerned; and any such act shall not amount to an infringement of the patent concerned. (3) Subject to sections 13 and 55 and to any agreement for the time being in force, where 2 or more persons are proprietors of a patent one of them shall not without the consent of the other or others grant a licence under the patent or assign or mortgage a share in the patent. (4) Subject to those sections, where 2 or more persons are proprietors of a patent, anyone else may supply one of those persons with the means, relating to an essential element of the invention, for putting the invention into effect, and the supply of those means by virtue of this subsection shall not amount to an infringement of the patent. (5) Where a patented product is disposed of by any of 2 or more proprietors to any person, that person and any other person claiming through him shall be entitled to deal with the product in the same way as if it had been disposed of by a sole registered proprietor. (6) Nothing in subsection (1) or (2) shall affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such. (7) This section shall have effect in relation to an application for a patent as filed as it has effect in relation to a patent and- (a) references to a patent and a patent being granted shall accordingly include references respectively to any such application and to the application being filed; and (b) the reference in subsection (5) to a patented product shall be construed accordingly. [cf. 1977 c. 37 s. 36 U.K.; EPC Art. 59] PATENTS ORDINANCE - SECT 55 Determination of right to patent after grant VerDate:30/06/1997 (1) After a patent has been granted for an invention any person having or claiming a proprietary interest in or under the patent may refer to the court the question- (a) who is or are the true proprietor or proprietors of the patent; (b) whether the patent should have been granted to the person or persons to whom it was granted; or (c) whether any right in or under the patent should be transferred or granted to any other person or persons, and the court shall determine the question and make such order as it thinks fit to give effect to the determination. (2) Without prejudice to the generality of subsection (1), an order under that subsection may contain provision- (a) directing that the person by whom the reference is made under that subsection shall be included (whether or not to the exclusion of any other person) among the persons registered as proprietors of the patent; (b) directing the registration of a transaction, instrument or event by virtue of which that person has acquired any right in or under the patent; (c) granting any licence or other right in or under the patent; (d) directing the proprietor of the patent or any person having any right in or under the patent to do anything specified in the order as necessary to carry out the other provisions of the order. (3) If any person to whom directions have been given under subsection (2)(d) fails to do anything necessary for carrying out any such directions within 14 days after the date of the order containing the directions, the court may, on application made to it by any person in whose favour or on whose reference the order containing the directions was made, authorize him to do that thing on behalf of the person to whom the directions were given. (4) Where the court finds on a reference under this section that the patent was granted to a person not entitled to be granted that patent (whether alone or with other persons) and on an application made under section 91 makes an order on that ground for the conditional or unconditional revocation of the patent, the court may order that the person by whom the application was made or his successor in title may, subject to section 103, make a new application for a patent- (a) in the case of unconditional revocation, for the whole of the matter comprised in the specification of that patent; and (b) in the case of conditional revocation, for the matter which in the opinion of the court should be excluded from that specification by amendment under section 102. (5) Where a new application for a patent is made under subsection (4), it shall be treated- (a) as having been filed on the date of filing the application to which the reference relates; and (b) as having the same date of filing and, where the reference under this section is in respect of a standard patent, as having the same deemed date of filing, as the application to which the reference relates. (6) Where the reference under this section is in respect of a standard patent, the court may order in respect of any new application under subsection (4)- (a) that all or any of the requirements of section 15(2) or (3) or 23(3) or (4) be dispensed with; and (b) that the person making the new application shall for the purposes of that application be deemed to have filed a request to record having the same date of filing as the request to record in the application for the patent to which the reference relates. (7) On any such reference as is mentioned in subsection (4) no order shall be made under this section transferring the patent to which the reference relates on the ground that the patent was granted to a person not so entitled, and no order shall be made under subsection (4) on that ground, if the reference was made after the end of 2 years beginning with the date of the grant, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or, as the case may be, of the transfer of the patent to him that he was not entitled to the patent. (8) Where a question is referred to the court under this section an order shall not be made by virtue of subsection (2) or under subsection (4) on the reference unless notice of the reference is given to all persons registered as proprietor of the patent or as having a right in or under the patent except those who are parties to the reference. [cf. 1977 c. 37 s. 37 U.K.] PATENTS ORDINANCE - SECT 56 Effect of transfer of patent under section 55 VerDate:30/06/1997 (1) Where an order is made under section 55 that a patent shall be transferred from any person or persons (the old proprietor or proprietors) to one or more persons (whether or not including an old proprietor), then, except in a case falling within subsection (2), any licences or other rights granted or created by the old proprietor or proprietors shall, subject to section 50 and to the provisions of the order, continue in force and be treated as granted by the person or persons to whom the patent is ordered to be transferred (the new proprietor or proprietors). (2) Where an order is so made that a patent shall be transferred from the old proprietor or proprietors to one or more persons none of whom was an old proprietor (on the ground that the patent was granted to a person not entitled to be granted the patent), any licences or other rights in or under the patent shall, subject to the provisions of the order and subsection (3), lapse on the registration of that person or those persons as the new proprietor or proprietors of the patent. (3) Where an order is so made that a patent shall be transferred as mentioned in subsection (2) or that a person other than an old proprietor may make a new application for a patent and before the reference of the question under section 55 resulting in the making of any such order is registered, the old proprietor or proprietors or a licensee of the patent, acting in good faith, worked the invention in question in Hong Kong or made effective and serious preparations to do so, the old proprietor or proprietors or the licensee shall on making a request to the new proprietor or proprietors within the prescribed period be entitled to be granted a licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention, so far as it is the subject of the new application. (4) Any such licence shall be granted for a reasonable period and on reasonable terms. (5) The new proprietor or proprietors of the patent or any person claiming that he is entitled to be granted any such licence may refer to the court the question whether that person is so entitled and whether any such period is or terms are reasonable, and the court shall determine the question and may, if it considers it appropriate, order the grant of such a licence. [cf. 1977 c. 37 s. 38 U.K.] PATENTS ORDINANCE - SECT 57 Right to employees' inventions VerDate:30/06/1997 PART VI EMPLOYEES' INVENTIONS (1) Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer for the purposes of this Ordinance and all other purposes if- (a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or (b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer's undertaking. (2) Any other invention made by an employee shall, as between him and his employer, be taken for those purposes to belong to the employee. (3) Where by virtue of this section an invention belongs, as between him and his employer, to an employee, nothing done- (a) by or on behalf of the employee or any person claiming under him for the purposes of pursuing an application for a patent; or (b) by any person for the purpose of performing or working the invention, shall be taken to infringe any protected layout-design (topography) right to which, as between him and his employer, his employer is entitled in any model or document relating to the invention. [cf. 1977 c. 37 s. 39 U.K.] PATENTS ORDINANCE - SECT 58 Compensation of employees for certain inventions VerDate:30/06/1997 (1) Where it appears to the court on an application made by an employee within the prescribed period that- (a) the employee has made an invention belonging to the employer for which a patent has been granted; (b) the patent is (having regard among other things to the size and nature of the employer's undertaking) of outstanding benefit to the employer; and (c) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer, the court may award him such compensation of an amount determined under section 59. (2) Where it appears to the court on an application made by an employee within the prescribed period that- (a) a patent has been granted for an invention made by and belonging to the employee; (b) his rights in the invention, or in any patent or application for a patent for the invention, have since the commencement of this section been assigned to the employer or an exclusive licence under the patent or application for a patent has since the commencement of this section been granted to the employer; (c) having regard to all the circumstances of the case, including the terms of the contract of assignment or grant or any ancillary contract ("the relevant contract"), the benefit derived by the employee from the relevant contract is inadequate in relation to the benefit derived by the employer from the patent; and (d) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer in addition to the benefit derived from the relevant contract, the court may award him such compensation of an amount determined under section 59. (3) Subsection (2) shall have effect notwithstanding anything in the relevant contract or any agreement applicable to the invention. (4) References in this section to an invention belonging to an employer or an employee are references to it so belonging as between the employer and the employee. [cf. 1977 c. 37 s. 40 U.K.] PATENTS ORDINANCE - SECT 59 Amount of compensation VerDate:30/06/1997 (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.] PATENTS ORDINANCE - SECT 60 Enforceability of contracts relating to employees' inventions VerDate:30/06/1997 (1) This section applies to any contract (whenever made) relating to inventions made by an employee, being a contract entered into by him- (a) with the employer (alone or with another); or (b) with some other person at the request of the employer or in pursuance of the employee's contract of employment. (2) Any term in a contract to which this section applies which diminishes the employee's rights in inventions of any description made by him after the commencement of this section and the date of the contract, or in or under patents for those inventions or applications for such patents, shall be unenforceable against him to the extent that it diminishes his rights in an invention of that description so made, or in or under a patent for such an invention or an application for any such patent. (3) Subsection (2) is without prejudice to any duty of confidentiality owed to his employer by an employee by virtue of any rule of law or otherwise. (4) This section applies to any arrangement made with a public officer in the course of his duties as it applies to any contract made between an employee and an employer other than the Government. [cf. 1977 c. 37 s. 42 U.K.] PATENTS ORDINANCE - SECT 61 Supplementary VerDate:30/06/1997 (1) Sections 57 to 60 shall not apply to an invention made before the commencement of this Ordinance. <* Note-Exp. x-Ref: Sections 57, 58, 59, 60 *> (2) Sections 57 to 60 shall not apply to an invention made by an employee unless at the time he made the invention one of the following conditions was satisfied in his case, that is to say- <* Note-Exp. x-Ref: Sections 57, 58, 59, 60 *> (a) he was mainly employed in Hong Kong; or (b) he was not mainly employed anywhere or his place of employment could not be determined, but his employer had a place of business in Hong Kong to which the employee was attached, whether or not he was also attached elsewhere. (3) In sections 57 to 60 and this section, except so far as the context otherwise requires, references to the making of an invention by an employee are references to his making it alone or jointly with any other person, but do not include references to his merely contributing advice or other assistance in the making of an invention by another employee. <* Note- Exp. x-Ref: Sections 57, 58, 59, 60 *> (4) Any references in sections 57 to 60- <* Note-Exp. x-Ref: Sections 57, 58, 59, 60 *> (a) to a patent are references to a patent or other forms of protection for an invention; (b) to a patent being granted are references to its being granted, whether under the law of Hong Kong or the law in force in any other country, territory or area or under any treaty or international convention. (5) For the purposes of sections 58 and 59 the benefit derived or expected to be derived by an employer from a patent shall, where he dies before any award is made under section 58 in respect of the patent, include any benefit derived or expected to be derived from the patent by his personal representatives or by any person in whom the patent was vested by their assent. (6) Where an employee dies before an award is made under section 58 in respect of a patented invention made by him, his personal representatives or their successors in title may exercise his right to make or proceed with an application for compensation under subsection (1) or (2) of that section. (7) In sections 58 and 59 and this section "benefit" (利益) means benefit in money or money's worth. (8) In section 59(2)- "person connected with" (有關連的人), in relation to an employer, means- (a) where the employer is a natural person- (i) a relative of the employer; (ii) a partner of the employer and any relative of that partner; (iii) a partnership in which the employer is a partner; (iv) any corporation controlled by the employer, by a partner of the employer or by a partnership in which the employer is a partner; (v) any director or principal officer of any such corporation as is referred to in subparagraph (iv); (b) where the employer is a corporation- (i) any associated corporation; (ii) any person who controls the corporation and any partner of such person, and, where either such person is a natural person, any relative of such person; (iii) any director or principal officer of that corporation or of any associated corporation and any relative of any such director or officer; (iv) any partner of the corporation and, where such partner is a natural person, any relative of such partner; (c) where the employer is a partnership- (i) any partner of the partnership and where such partner is a partnership any partner of that partnership, any partner with the partnership in any other partnership and where such partner is a partnership any partner of that partnership and where any partner of, or with, or in any of the partnerships mentioned in this subparagraph is a natural person, any relative of such partner; (ii) any corporation controlled by the partnership or by any partner thereof or, where such a partner is a natural person, any relative of such partner; (iii) any corporation of which any partner is a director or principal officer; (iv) any director or principal officer of a corporation referred to in subparagraph (ii); and for the purposes of that definition- "associated corporation" (有聯繫法團), in relation to a person, means- (a) a corporation over which the person has control; (b) if the person is a corporation- (i) a corporation which has control over the person; or (ii) a corporation which is under the control of the same person as is the first-mentioned person; "control" (控制), in relation to a corporation, means the power of a person to secure- (a) by means of the holding of shares or the possession of voting power in or in relation to that or any other corporation; or (b) by virtue of any powers conferred by the articles of association or other document regulating that or any other corporation, that the affairs of the first-mentioned corporation are conducted in accordance with the wishes of that person; "principal officer" (主要人員) means- (a) a person employed by a corporation who, either alone or jointly with one or more other persons, is responsible under the immediate authority of the directors for the conduct of the business of the corporation; or (b) a person so employed who, under the immediate authority of a director of the corporation or a person to whom paragraph (a) applies, exercises managerial functions in respect of the corporation; "relative" (親屬) means the spouse, parent, child, brother or sister of the relevant person, and, in deducing such a relationship, an adopted child shall be deemed to be a child both of the natural parents and the adopting parent and a step child to be the child of both the natural parents and of any step parent. "benefit" (利益) "person connected with" (有關連的人) "associated corporation" (有聯繫法團) "control" (控制) "principal officer" (主要人員) "relative" (親屬) PATENTS ORDINANCE - SECT 62 Avoidance of certain restrictive conditions VerDate:30/06/1997 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.] PATENTS ORDINANCE - SECT 63 Determination of parts of certain contracts VerDate:30/06/1997 (1) This section applies to- (a) any contract for the supply of a patented product; (b) any licence to work a patented invention; or (c) any contract relating to any such supply or licence, where the patent or all the patents by which the product or invention was protected at the time of the making of the contract or granting of the licence has or have ceased to be in force. (2) Notwithstanding anything to the contrary in the contract or licence or in any other contract, a contract or licence to which this section applies may to the extent (and only to the extent) that the contract or licence relates to the product or invention, be determined by either party on giving 3 months' notice in writing to the other party. (3) In subsection (1) "patented product" (專利產品) and "patented invention" (專利發明) include respectively a product and an invention which is the subject of an application for a patent, and that subsection shall apply in relation to a patent by which any such product or invention was protected and which was granted after the time of the making of the contract or granting of the licence in question, on an application for a patent which had been filed before that time, as it applies to a patent in force at that time. (4) If, on an application under this subsection made by either party to a contract or licence falling within subsection (1), the court is satisfied that, in consequence of the patent or patents concerned ceasing to be in force, it would be unjust to require the applicant to continue to comply with all terms and conditions of the contract or licence, it may make such order varying those terms or conditions as, having regard to all the circumstances of the case, it thinks just as between the parties. (5) The foregoing provisions of this section apply to contracts and licences whether made before or after the commencement of this section. (6) The provisions of this section shall be without prejudice to any rule of law relating to the frustration of contracts and any right of determining a contract or licence exercisable apart from this section. [cf. 1977 c. 37 s. 45 U.K.] "patented product" (專利產品) and "patented invention" (專利發明) PATENTS ORDINANCE - SECT 64 Compulsory licences for standard patents VerDate:07/05/2004 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 on