10.28.
We consider that the question of the right of an employee, as between himself and the employer, in respect of inventions made in the course of the employee's normal duties should be specifically provided for in the proposed legislation. We also consider that an employee should be entitled to compensation based on all the circumstances of the case, not merely the terms of any contract between the parties. We have reached this view based on the fact that one of the purposes of any patent system is to encourage and stimulate inventiveness. Whilst the lack of any compensation may not indicate that inventiveness will not be encouraged the possibility of obtaining some compensation would, we feel, give some incentive to employees. This has certainly been the experience in Japan. We have also noted that it is the trend to provide for compensation for employees in modern patent systems.
10.29. We consider that the provisions of ss.39 to 45 of the 1977 Act be used as the basis for the relevant provisions in the proposed Patents Bill. We recommend however that in any consultation exercise comments on the proposal should be specifically invited to ensure that the future provisions in this area meet the needs of employers and employees in Hong Kong.
Licences of right
10.30.
We considered whether the proposed legislation should contain provisions similar to those contained in the 1977 Act ss.46 and 47 under which the proprietor of a patent may apply to the Comptroller for an entry to the effect that licences under the patent are available as of right. On application under these provisions the Comptroller shall, if he is satisfied that the proprietor can grant a licence, make the entry. Where an entry is made any person shall be entitled as of right to a licence under the terms agreed with the proprietor or in default of agreement by the Comptroller. We feel that such a provision is not required for Hong Kong and we consider that the proposed legislation should not contain any such provisions.
Compulsory or non-voluntary licences (Part VII of the proposed Patents Bill)
10.31. We agree in principle that there is a need for provisions for the granting of compulsory or non-voluntary licences to prevent the abuse of the monopoly granted to the proprietor of a patent. Such provisions must balance the needs of the public at large and the proprietor of the patent. We consider that the provisions in the 1977 Act provide a basis for achieving such a balance but we are aware that the question of non-voluntary licences has been the subject of negotiations in the GATT as part of TRIPS and also is a subject under consideration in the WIPO harmonisation exercise. Although we propose, in the outline, that the 1977 Act provisions be followed, we recognise that these may require amendment if the international negotiations result in agreement. We accordingly note that these provisions will have to take account of any relevant international obligations in this respect.
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