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Weaknesses of Hong Kong's existing legislation
6.19.
A major disadvantage of the present system is the uncertainty that results from allowing a five year period after grant in the United Kingdom in which to register the patent in Hong Kong. The businessman in Hong Kong may have to wait that long, or longer if the time taken to grant a patent is taken into account, to be certain that a patent will not be extended to Hong Kong. His decision to invest in the United Kingdom patented technology must therefore be postponed unless he is willing to take the risk that patent protection will not be sought in Hong Kong.
6.20. The legal effect of a Hong Kong certificate of registration is not entirely clear. By section 6 of the Ordinance the certificate is expressed to confer on the applicant "privileges and rights, subject to all conditions established by the laws of Hong Kong, as though the patent had been granted in the United Kingdom with an extension to Hong Kong". The provision was intended to apply to Hong Kong the patent law of the United Kingdom. However, no Order in Council extending the Patent Acts to Hong Kong has been promulgated. It has therefore been argued that only the common law rights and privileges enjoyed by a patentee extend to Hong Kong, if indeed common law rights survive the introduction of a complete statutory code of patent law and practice by the 1977 Patent Act: Pfizer Inc v Jiwą International (HK) Co [1988] I HKLR 76.
6.21.
Against this view, two later decisions, Improver Corp v Raymond Industrial Ltd [1989] I HKLR 5 and National Research Development Corp v The Wellcome Foundation Ltd [1991] FSR 663, have held that a patentee in Hong Kong has the same rights and privileges as a patentee in the United Kingdom under the 1977 Patent Act. A patentee can therefore sue for infringement in the same way as a patentee in the United Kingdom under section 60 of the Patents Act 1977. Most acts of manufacture, sale, import and export, without consent, may be prevented. The patent may be challenged in Hong Kong by applying to a Hong Kong court for a declaration that the rights and privileges do not extend to Hong Kong.
6.22.
Since the Ordinance extends only the patentee's rights and privileges, it is arguable that it does not operate to extend to Hong Kong the patentee's statutory obligations under the United Kingdom Patent Act 1977. The provisions of the 1977 Act may not apply in Hong Kong in respect of other important matters such as compulsory licences, employees' rights with regard to inventions, a requirement that a patent must be worked, or a restriction on the unwarranted threat of proceedings for infringement. The absence of any statutory guidance or court decision on such matters is unsatisfactory.
6.23.
Another disadvantage of Hong Kong's current system is that any application to amend the patent cannot be made in Hong Kong, but must be made in the United Kingdom. This creates inconvenience, especially if during the course of litigation it becomes apparent that the patent should be amended.
6.24.
The rights conferred by a Hong Kong certificate of registration are expressed to be granted to the patentee of a United Kingdom patent or European patent (UK), or his assignee. The legal position of licensees who may be entitled, under certain exclusive
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