4.7.
The obvious drawback of a non-examination system is that any patent system which entails the creation of rights on mere registration without search and examination creates greater uncertainty primarily because there is no assessment of validity prior to grant, but also because there is no check on the content of the application.
4.8.
In contrast, the benefit of a search and examination procedure is that there is a preliminary investigation of the patentability of the invention claimed, and the claims will be set out clearly although the question of whether a claim is valid will still be open to a degree of doubt.
4.9.
In theory litigation may be an alternative to proper search and examination of patents but it is not considered to be an acceptable method of ascertaining the extent of claimed patent rights. Litigation is by its very nature expensive and patent litigation is inevitably some of the most expensive, difficult and time consuming litigation.
4.10.
One of the major objections to a grant of a patent based otherwise than upon examination as to patentability is the question of possible abuse of such a system either intentionally or unintentionally. The grant of an invalid patent poses a considerable hindrance to other manufacturers and traders. Even though grounds for invalidity may be known, the expense of patent litigation is such that for many businesses it is prohibitive to challenge the patent. Hence a settlement is often made in circumstances where it should not be the case.
4.11.
A further objection is that patent protection is based upon the definition of the patent right claimed, that is, as set out in the claims. In a non-examination system the definition of the monopoly set out in the claims may be unclear, because the patent office is bound to grant a patent for all patent applications even if they are imprecise. Such imprecision can generate uncertainty which may prove harmful to trade and investment.
4.12.
If a non-examination system is adopted in Hong Kong, the courts will be presented with the task of interpreting unexamined specifications and of deciding whether there is any validity and, if so, what monopoly there is, or should be, in respect of claims that may have been inexpertly or hastily drafted but that nevertheless merit some form of protection. The task of sifting the valid claims from the invalid and of refining the language, and therefore the scope, of the claims will not have been done by those best fitted by their training and experience to do them, the examiners at the patent office. The interactive correspondence between the examiner and the applicant that almost invariably occurs in the examination process would be replaced by judicial grappling which, even with the expert assistance of a scientific adviser, would inevitably prolong court proceedings and strain the resources of the judiciary.
4.13.
A few countries do have non-examination patent systems. Where judicial expertise has developed in such countries, many of the disadvantages can be overcome. However, a country establishing a new deposit system where there is limited judicial expertise will face the problems outlined in paragraph 4.12.
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