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Level of inventiveness
12.22.
In any non-examination system, even with modifications such as those we have considered, the validity of a petty patent is decided only when it is litigated. However, in commerce, the proprietor and competitors need to have some indication of the validity of patents without resorting to litigation. If the level of inventiveness required of a petty patent is the same as that required of a patent, this will provide some indication of what the court's decision on the validity of a petty patent would be because inventiveness would be judged against well known and established standards, including EPO guidelines. This would not be the case if a lower level of inventiveness were adopted. It would take some time before a body of law on the subject was established and in the meantime there would be uncertainty.
What should be protected by a petty patent?
12.23.
The question here is whether the same inventions should be protectable by the petty patent as by the patent. In some systems pharmaceutical products and chemicals are excluded from protection by petty patents. The reason is that it normally takes many years for a new substance to be placed on the market, even though a patent application will have been made shortly after the discovery. Many promising substance inventions ultimately fall by the wayside because they do not prove to be safe. It is sometimes argued that because a petty patent system offers shorter protection than a patent, it is not worthwhile offering protection by way of petty patent for such substances particularly if full patent protection is available.
12.24. It can also be argued that petty patents should be available for all processes and substances. Although generally drugs and chemicals warrant full patent protection it does not necessarily follow that they do not also need petty patent protection. A drug or substance may be approved for sale before the expiry of the term of the petty patent. Further, a petty patent may be useful to prevent a competitor from manufacturing the drug or chemical in Hong Kong and selling it outside Hong Kong in a market which does not require testing and marketing approval.
12.25. Allowing petty patents for drugs and chemicals may create difficulties in systems where a lower level of inventiveness is required for petty patents than is required for patents. Where there is a lower level of inventiveness patents may be granted for drugs and substances that are only marginally inventive and therefore difficult to distinguish from each other. If the same level of inventiveness were to apply, this argument for reducing the scope of inventions protected by a petty patent would lose its force.
Term
12.26. As can be seen from Table A at the end of chapter 11, there is no uniformity in the term of the various petty patents. However, it is accepted that a petty patent, as it is intended to protect short term inventions, should have a shorter term than a patent, and indeed, most petty patent systems have shorter terms. Clearly, in determining the term of a petty patent, the relevant consideration is the market life of the products which the system seeks to protect.
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