contracted out, the relatively small number of applications, the prohibitive expense, the difficulty of recruiting skilled examiners and the difficulties of contracting out the work of examination as a permanent arrangement make this option untenable (paragraphs 12.3, 12.4, 13.4, 13.5). We have decided against the grant of patents in Hong Kong without a prior search and examination for validity. Adjudicating on unexamined patents in litigation would make demands on judicial time. Invalid patents could be used unjustifiably to threaten action against competitors. An unexamined amendment to a patent could broaden the scope of the patent to cover competitors' activities. These risks are not justified where patent protection can be had by registration of an examined patent. However, where the need for quick petty patent protection in Hong Kong cannot be satisfied by registration or grant of an examined patent, the risks of granting petty patents without examination become acceptable if certain steps are taken to minimize them (paragraphs 12.5 to 12.7). The minority view among us opposes the introduction of an unexamined petty patent on the ground that it may lead to uncertainty and abuse (paragraphs 13.12 to 13.14).
The proposal for petty patents
1.34.
By a majority we recommend the grant of petty patents in Hong Kong. We propose a number of safeguards to granting petty patents without examination. The applicant for a Hong Kong petty patent must file a search report in support of his application. A search report will give, to the person who seeks to challenge the patent, an indication of the prior art which would invalidate it (paragraphs 12.8 to 12.12, 13.7, 13.8, 13.30). We propose a right to a speedy trial where injunctive relief is ordered in an interlocutory application to the court (paragraphs 12.14, 13.10). In any proceedings, it will be for the owner of the petty patent to show that it is valid (paragraphs 12.15, 13.10, 13.37). The practice of ordering security from the plaintiff to fortify his undertaking to pay damages, if the injunction obtained against the defendant proves unwarranted, should be encouraged in petty patent litigation (paragraph 12.16). Amendments made to a petty patent application before grant will be open to challenge in the courts after grant. The right to amend will be subject to restrictions (paragraphs 12.17, 12.18, 13.35, 13.36). The number of claims in the petty patent will be limited to simplify litigation (paragraphs 12.27, 13.10).
1.35.
Hong Kong's proposed patent law, with the necessary modifications, will apply to petty patents, except that there will be no compulsory licensing of a petty patent (paragraphs 13.16 to 13.21, 13.38 to 13.42). The Hong Kong petty patent will have the same standard of patentability as the Hong Kong patent. It may be obtained for the same range of inventions as the Hong Kong patent (paragraphs 12.20 to 12.25, 13.10, 13.23). It will give the same scope of protection against infringement (paragraph 13.14). Application for a petty patent may be made in English, or in Chinese, with a translation into English (paragraph 13.31). The application must comply with certain minimum requirements to obtain a date of filing. Once the application has its date of filing, the Registrar will allow time for complying with any remaining administrative requirements (paragraphs 13.22, 13.27 to 13.29). Time will be allowed for filing the search report (paragraph 13.30). The Hong Kong petty patent application may claim priority under the Paris Convention from an earlier application made in a country which is a party to the Convention (paragraph 13.26). The grant of the petty patent should be made as soon as the formal requirements have been complied with and not later than six months after filing. There will be a right to defer grant
8
fc
W
g1
1:
a
th
a
I