 |
|
|
PATENTS
Barry Yen
Introduction
Prerequisites
Old Law
New Law
Transitional Arrangements
Patent Cooperation Treaty (PCT)
Objective of the PCT
Continuity
Introduction
The patent system was created in the United Kingdom to encourage innovation and also developments in industrial techniques. Essentially, in return for full disclosure of the details of the patent a monopoly is granted to manufacture, use, and sell the invention for up to 20 years.
A new patent law came into force on 27 June 1997. This memo describes the prerequisites for patent protection, the old patent law, the new patent law and the transitional provisions.
Prerequisites
In order to qualify for a patent registration an invention must:
- Be new. That is, it must not have been publicly disclosed whether by use, advertising, manufacture or any other oral or written form, anywhere in the world prior to filing.
- Involve an inventive step. This step must be supported by a detailed specification and claims. If the step is obvious to a person of ordinary skill in the trade at the time of the invention, then it will not be regarded as satisfying this requirement. Process specifications or modes of operation which do not involve an inventive step may still be protected as trade secrets or know-how.
- Be capable of industrial application. This means that the invention must take the practical form of an apparatus or device, a product, an industrial process or method of operation.
- Not fall into the category of excluded items. Inventions are not patentable if they are merely a discovery, a scientific theory or a mathematical method. You should note that the traditional view is that patents for method of performing a mental act or doing business have not been accepted. However there are an increasing number of cases of the US Patent Office accepting applications for methods of doing business when the method has resulted in a useful result. You should note that these methods are described in computer programs. Whether the UK Patent Office will adopt a more liberal view remains to be seen.
|
|
|
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS |
Hong Kong did not have an independent patent examination system. The Hong Kong Registration of Patents Ordinance (Chapter 42 of the Laws of Hong Kong) ["Cap 42"] simply provided for the re-registration of a United Kingdom ("UK") Patent or a European Patent which designated the United Kingdom ["EP(UK)"]. UK Patents may have been granted under the UK Patents Act 1949 or the UK Patents Act 1977. The proprietor had to apply to register in Hong Kong within five years of the grant of the base registration.
Once a patent was re-registered in Hong Kong, the patent owner would have the same privileges and rights as granted to the base registration. The Hong Kong patent remained in force without payment of renewal fees for as long as the base registration remained in force. The Hong Kong registration was automatically invalidated if the UK or EP(UK) patent was revoked or cancelled. However after registration there is no record in Hong Kong of the status of the base patent. This and the fact that a long time is given before registration is required was regarded as a deficiency of the old system.
No remedy was available for alleged infringement in Hong Kong until a certificate of registration was issued in Hong Kong.
New Law
As part of the Hong Kong Government's plans to make Hong Kong's intellectual property laws independent of the United Kingdom, it embarked on a program of reform. To this end a Patents Steering Committee was established in 1986 to advise the Government on the future needs of the post 30 June 1997 Hong Kong Special Administrative Region ("HKSAR"). A Patents Bill was published in June 1996 which was modelled on the UK Patents Act 1977 and also incorporates features from the European Patent Convention. The Patents Ordinance (No. 52 of 1997) was passed on 28 May 1997. The Patents (Transitional Arrangements) Rules were published and were approved on 17 June 1997. The Patents General Rules were published on 20 June 1997 and have been approved.
The Patents Ordinance provides for the following:
- An independent patent registration system based on a Chinese patent, a United Kingdom national patent, or a European Patent designating the UK.
- A two stage registration process - an application must be filed within six months of the date of publication of the possible base patent. The patent Registry will make a formality check and then record the request in the register and publish this. The registration will be completed upon application after the grant of the base patent. The patent will then be published.
- The registration will be maintained independently in Hong Kong upon payment of renewal fees for a maximum of 20 years from the application date of the base patent.
- The registration of petty or short-term patents. This is intended to benefit manufacturers of products with a short commercial life. It will have a maximum term of eight years. A petty patent is limited to one independent claim but can have unlimited subsidiary claims. The absence of any substantive examination has raised concern about possible abuses. A number of safeguards have therefore been included. Firstly, applicants must file a prior art search from a prescribed searching authority before the application can be registered. A second safeguard is a note in the Patents Bill stating that the fact that the short term patent has been registered carries no weight in enforcement proceedings. In court proceedings the proprietor must establish prima facie the validity of the patent. Thirdly, the Bill provides the defendant a right to an expedited trial after certain interlocutory proceedings so that any potential damages are minimised. The fourth safeguard is to provide a civil remedy for groundless threats of infringement proceedings.
- There are also provisions relating to employee's inventions, compulsory licenses, infringement and amendments which correspond with provisions in the UK Patents Act 1977.
- Patent protection can also be obtained via the Patent Cooperation Treaty (PCT) by designating China as the designating state either for a standard patent or for a short- term patent. Regarding short-term patents, an application may only be filed if a utility model was claimed in China. Before an application is made in Hong Kong the PCT applications must have entered its national phase in the Chinese Patent Office. There are specific time limits within which an applicant for a standard patent or a short term patent must apply to register in Hong Kong. The arrangement for standard patents is only available if the date of publication or issuance is on or after 27 June 1997. The arrangement for short-term patents is only available if the patent entered the national phase in China or if the national application notification was issued by the Chinese Patent Office on or after the 27 June 1997 commencement date. Further details regarding the PCT are set out below.
- There are also transitional provisions which allow for UK and European patents to be registered under the proposed system. Such registrations will be subject to renewal fees in Hong Kong. The transitional provisions are detailed below.
|
|
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS |
Transitional Arrangements
Section 158 of the new Patents Ordinance, provides for Transitional Arrangements Rules ("TR") for the following categories of patents or patent applications which have been registered under the former Patent Ordinance ("Cap 42") or could have been registered under Cap 42, as follows:
|
a.
|
Existing Registered Patents
TR 3 and 4 deal with patents registered under Cap 42. The effect of these rules is that every existing registered patent in force on the commencement date is automatically deemed to be a standard patent granted under Section 27(1)(b) of the new Patents Ordinance. These standard patents :
- are deemed to have been granted on, and to take effect, as from the commencement date
- shall have first renewal fees due from the 4th year after the commencement date
|
|
b.
|
Pending applications for registration under the existing Patents Ordinance
TR 5 deals with applications for registration which have been lodged under Cap 42 before the commencement date but which have not yet been approved. Once registered under Cap 42, they automatically become deemed standard patents. When the Registrar issues the certificate of registration in respect of this kind of patent, the patent shall be deemed to have been registered under Cap 42 on the day before the commencement date. These deemed standard patents :
- are deemed to have been granted on, and to take effect, as from the commencement date
- shall have first renewal fees due from the 4th year after the commencement date
|
|
c.
|
Existing 1949 Act and 1977 Act Patents
These are 1949 Act and 1977 Act patents which have been granted, or have taken effect in the United Kingdom before the commencement date, but which have not been the subject of applications for registration under Cap 42 before the commencement date. Under TR 6, the applicant should make a request for registration and grant of a standard patent within :
- 12 months after commencement date; or
- 5 years after the date of grant of the patent, or of its taking effect, in the United Kingdom
whichever is earlier.
An application for the standard patent must comply with the provisions of the new Patents Ordinance.
|
|
d.
|
Published applications for 1977 Act Patents
These are 1977 Act patent applications published before the commencement date, but where requests to record have been made in Hong Kong after the commencement date. Under TR 7, the applicant should make a request to record within 18 months after commencement date.
The applicant will also in due course have to apply for a request for the grant of a standard patent.
An application for the standard patent must comply with the provisions of the new Patents Ordinance.
|
|
e.
|
Published applications for 1977 Act Patents
(Alternative procedure where patent granted in United Kingdom within 12 months after commencement date)
These are 1977 Act patent applications published before the commencement date and where such patent is granted within 12 months after the commencement date. Under TR 8, the applicant should make a request for registration and grant only within 6 months after the date of grant of the patent.
An application for the standard patent must comply with the provisions of the new Patents Ordinance.
|
|
f.
|
Existing applications for 1949 Act Patents, and patents granted after the commencement date
These are existing 1949 Act patent applications, and patents granted in the United Kingdom after the commencement date in respect of such applications. As a matter of practice there are likely to be very few in this category. Under TR 9, the request for registration and grant of a standard patent shall be made within:
- 6 months after the date of grant of the patent; or
- 20 years after the date of filing of the complete specification.
whichever is earlier.
An application for a standard patent must comply with the provisions of the new Patents Ordinance.
There are separate forms for transitional applications.
|
|
|
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS
SKYS
Lawyers
PATENTS
|
Patent Cooperation Treaty (PCT)
The PCT is an agreement for international cooperation in the field of patents. It is a treaty for rationalization and cooperation in the filing, searching and examination of patent applications. The PCT does not provide for the grant of international patents. The responsibility for granting patents remains in the individual Patent Offices where protection is sought. The PCT complements the Paris Convention. It is an agreement made under the Paris Convention.
The PCT entered into force on January 24, 1978 and become operational on June 1, 1978. China became an effective member of the PCT on January 1, 1994. The Chinese Patent Office (CPO) was also appointed as an:
- International Searching Authority; and
- International Preliminary Examination Authority.
These appointments mean that China enjoys the same status as other major patent offices throughout the world such as the European Patent Office, the Japanese Patent Office and the U.S. Patent Office.
Objective of the PCT
The prime objective of the PCT is to simplify and to render more effective and economical the process of applying for patent protection in several countries. Before the advent of the PCT, applicants had to file separate applications in each country of interest. Each of these applications was dealt with in isolation and involved a repetition of the work of filing and examination in each country. To achieve this objective, the PCT:
- establishes an International System which enables the filing, with a single Patent Office ("the Receiving Office"), of a single application (the "International Application") in one language, having effect in each of the countries Party to the PCT which the applicant names ("designates") in this application;
- provides for the formal Examination of the International Application by a single Patent Office, the Receiving Office;
- subjects each International Application to an International Search which results in a report citing the relevant prior art which may have to be taken into account in deciding whether the invention is patentable; that report is made available first to the Applicant and is later published;
- provides for Centralised International Publication of International Applications with the related International Search Reports, as well as their communication to the designated Offices; and
- provides an option for an International Preliminary Examination of the International Application which gives to the Offices that have to decide whether or not to grant a patent, and to the Applicant, a report containing an opinion as to whether the claimed invention meets certain international criteria for patentability.
Continuity
The People's Republic of China enacted a Basic Law for the HKSAR, which states that:
"the laws previously in force in Hong Kong, that is, the common law, rules of equity, ordinances, sub-ordinate legislation and customary law shall be maintained, except for any that contravene this law and subject to any amendment by the legislature of the Hong Kong Special Administrative Region." [Article 8]
In relation to patents, Article 139 of the Basic Law directs the government of the HKSAR
"to protect by law achievements in scientific and technological research, patents, discoveries and inventions"
On 30 September 1997 the court of First Instance handed down the first decision on a patent case in the post handover HKSAR. The court confirmed that patents registered under the old system were valid and also confirmed that English decisions were relevant for interpreting the new Patent Ordinance.
The HKSAR continues to be a member in its own right of the World Trade Organisation and all international agreements will continue to apply. The Hong Kong authorities have also liaised with their counterparts in the PRC regarding changes to all the new intellectual property laws. The HKSAR will maintain independent laws relating to trade marks, patents, copyright and registered designs. New laws relating to Registered Designs and Copyright also became effective on 27 June 1997.
This memo only provides an outline of some of the main provisions of the Ordinance. This is not a substitute for legal advice so you should not defer, take or alter any action as a consequence of this memo. Please contact us if you would like comments on how the Ordinance applies to specific patents.
Copyright 1997-9
SKYS - So Keung Yip & Sin
|
|
 |
|
|
|
