TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 107

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4.52.

Another disadvantage is that the quality of the search and examination and the time taken to issue the report would be outside Hong Kong's control. In addition, the cost of such an arrangement, whilst not quantifiable, would be substantial.

4.53.

Another drawback with contracting out search and examination is the difficulty involved in entering into the necessary contractual arrangement with the relevant searching and examining authority. The arrangement would have to be clear and flexible, and could well prove difficult to negotiate. If the relationship with the relevant authority deteriorates, it may not be possible to terminate it. Even if this were possible, changing from one authority to another could result in different standards of search and examination. The original patent office would be effectively locked into using the one authority, even if it proves to be an unsatisfactory arrangement.

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This type of arrangement might be sensible and advantageous in the short term whilst the patent office builds up the necessary expertise of its own examiners but may not be entirely satisfactory as a long term exercise.

Original grant using the Patent Co-operation Treaty (PCT)

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The main aims of the PCT which was concluded in 1970 were to provide procedures for obtaining legal protection for inventions and to provide for the dissemination of technical information. Chapters 1 and 2 of the PCT provide for international application and international search and, at the option of the applicant, for preliminary examination. In summary the PCT provides for -

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filing of applications with the Receiving Office in the country in which applicants are resident or of which they are nationals;

designation on filing by applicants of those PCT countries in which the applicant wishes his international application to have effect;

filing of an international patent application in one place, one language and with one set of fees which has the effect of being an application in all countries designated;

compulsory international searching by International Searching Authorities (i.e. regional or national patent offices doing search on a contract basis for WIPO);

optional international preliminary examination by International Searching Authorities; and

minimal procedures for proceeding with the grant of the patent in the designated countries.

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