Original grant with search and examination contracted out
4.47.
In paragraph 4.18 the examination system in which a single patent office conducts the search and examination and grants the patent was outlined. Another possibility is for the patent office to grant its own patents after full search and examination is carried out by a search and examination organisation to whom the task of search and examination has been contracted out (contracting out examination system). It is noted for example that the Australian Patent Office conducted in 1990 a number of international searches for the Thai Patent Office under a bilateral agreement.
Operation of such a system
4.48.
In this system it is envisaged that the patent office would receive the application and after checking for formalities send this to a search and examination organisation, usually another patent office, for a search report, or an examination report, or both. After receipt of the report the original patent office would decide whether to grant the patent, reject the application or grant the patent subject to amendment. Even if both search and examination were carried out by the other patent office it would still require consideration in the original patent office before the patent is granted.
4.49.
On the assumption that it is possible for Hong Kong to enter into such an arrangement with a suitable search and examination authority we have considered the advantages and disadvantages of such a system.
Advantages of a contracting out examination system
4.50.
An advantage of this system is that it is not necessary to employ as many examiners as are required by other examination systems. The infrastructural requirements are also less, because the technical information centre would not have to be as comprehensive. Such a system is attractive for a country where it is important that for some reason, usually nationalistic, there should be a patent system that is not dependent on another country's system but which cannot justify the high costs associated with full search and examination. It can complement that country's own search and examination facilities.
Disadvantages of this system
4.51.
Search and examination procedures require (after the search for novelty and inventiveness) an assessment of whether the patent can be granted subject to amendment. There is therefore still a need to employ experienced personnel to conduct the substantial work to be done in evaluating the results of the examination. Such personnel would have to bring considerable expertise to the task. Their role includes considering submissions and amendments, and determining conflicting rights. Although the resource implications would be less than for an original grant after search and examination by the granting office, they would still be considerable particularly if the patents granted are to gain international respect.
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