dvantages
Kingdom on in the egistering nas effect
ed in the 1979 and d by the ty. The partment
al times: Kingdom
nts 1973 stem the
and the
49 Act, ig Kong
1 patent Iropean ›ursuant
nt or a
within
¡. Any
e Paris
Convention for the Protection of Industrial Property (the Paris Convention), will therefore have been made in connection with the United Kingdom application or the international application for the European patent (UK) and does not directly affect the Hong Kong application for registration.
Formal requirements
6.7.
An application for registration in Hong Kong of a United Kingdom patent or European patent (UK) must be accompanied by :
(a)
(b)
a certified copy of the specification together with the drawings, if any, and a certified copy of the translation into English of the specification if the specification is published in a language other than English, and
a certificate from the Comptroller- General of the United Kingdom Patent Office giving full particulars of the grant of the patent or of its taking effect in the United Kingdom.
The role of the Registrar
6.8.
On receipt of the application with the required documents and on payment of the fee (currently, HK$1,600), the Registrar of Patents is required to issue a certificate of registration. The Rules require that the issue of a certificate of registration be notified in the Government Gazette at the expense of the applicant. The Registrar is not concerned to enquire into the validity of the United Kingdom patent or the European patent (UK).
Enforcement of rights
6.9.
Registration in Hong Kong confers on the grantee the privileges and rights as though the patent had been granted in the United Kingdom with an extension to Hong Kong. It is generally accepted that a holder of a patent registered in Hong Kong has the same remedies as the holder of a patent granted in the United Kingdom. Thus the patentee can sue for infringement under the same grounds as set out in Section 60 of the United Kingdom Patents Act 1977 (see paragraph 3.13), and so prevent most instances of unauthorised exploitation by manufacture, sale, import and export.
6.10.
The Ordinance provides that no action for infringement lies in respect of any act prior to the date of issue of the certificate of registration in Hong Kong. Patent owners therefore need to register their patents in Hong Kong as soon as they can to avoid loss of rights.
6.11.
The rights and privileges continue in force so long as the United Kingdom patent or the European patent (UK) remain in force and valid in the United Kingdom. The term of the patent is 20 years from the date of application in the United Kingdom, however, the period of protection is effectively about 16 years if the time taken to grant and register the patent is taken into account.
49