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Provisions as to patents after grant and property in a patent (Part IV & V of the proposed Patents Bill)
Term of patent
10.16.
The HK patent will take effect from the date of grant in Hong Kong and will remain in force for 20 years from the date of applying for the EPA provided it is renewed in the prescribed manner. Renewal is required at the end of the 4th year after the date of filing of the EPA or the first anniversary of that filing date after the date of grant of the HK patent and thereafter annually. The length of term of the patent may have to be considered in the light of the proposals referred to in paragraph 3.15 to provide for an extended term in certain circumstances.
10.17.
We considered the commencement date of the term and of renewals in the light of the administrative requirements of the registry and the needs of proprietors of the HK patent. We came to the conclusion that keeping the term and renewals tied in to the same date as the filing date of the EPA would be simpler and more convenient for both the registry and the users of the system.
10.18.
We have provided that a patent which has lapsed may be restored and have based this provision on s.28 of the United Kingdom Patents Act 1949 (1949 Act) rather than the current UK legislation as we consider this provides a more equitable method of dealing with this issue.
Opposition in the EPO
10.19.
Part V of the EPC contains provisions for post grant opposition to an EP patent and for revocation or amendment of the EP patent as a result. In view of the importance of these opposition proceedings we consider that this should be an exception to the general rule outlined in paragraph 10.3 above that the HK patent once granted should only be capable of revocation after court proceedings in Hong Kong.
10.20.
Clauses 24 and 25 accordingly require the proprietor of the HK patent to file with the Registrar within a prescribed period after the final decision in the EPO, namely after all appeal procedures have been complied with, an amended EP patent or an order of revocation or amendment from the EPO.
10.21.
In order to ensure that any such amendment or revocation is recorded with the Registrar we propose that the applicant be required to give information as to whether any opposition is pending when he makes the application for grant (Clause 14 (3)). In addition, the proprietor of the HK patent will be required to state in his application to renew either the current standing of any such opposition proceedings or that no opposition proceedings are pending and whether the time for commencing such proceedings has expired. The Registrar may refuse to renew the patent if this statement is not made or if the EP patent has been revoked or amended (Clause 22(4)). Any refusal will be subject to appeal to the Court.
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