TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 109

Chapter 5

Patent systems - registering patents granted elsewhere

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Introduction

5.1.

In this chapter we consider the method of providing for an examination system by registering patents granted by another patent office. It continues the analysis of examination systems which started at paragraph 4.14.

5.2.

Two approaches to the registration of a patent granted by another patent office can be taken. The first approach is simply to register the patent granted by the other authority. The registered patent is dependent on the patent granted by the other authority. The second approach involves both registering the patent granted by the other authority and then granting an independent patent. With the second approach, the patent has a separate life from its "parent" and matters such as validity and revocation are dealt with locally.

5.3.

A registered patent can be a fully examined one. Any system that registers patents granted elsewhere can be regarded as a type of examination system, provided the authority which granted the patent in the first place has an examination system. If such a patent is the subject of the application for registration, it will already have been examined. If the quality of the examination in the granting authority is high and the patents granted by it are strong, those patents when registered elsewhere will also be strong and well respected.

5.4.

The term 'registration system' is used in this report to describe a system of registering patents by one patent office which have been searched and examined prior to grant by another patent office. It is to be distinguished from a system that allows deposit of a patent application and subsequently registers that patent without search or examination, namely a non-examination system.

Types of registration systems

5.5.

Hong Kong's present system is a registration system. The current system provides for the registration of United Kingdom patents granted under the Patents Act 1949 and the Patents Act 1977 and European patents designating the United Kingdom granted by the European Patent Office under the European Patent Convention, which have effect in the United Kingdom. On registration the rights and privileges given to the patentee continue in force only so long as the patent remains in force in the United Kingdom. Details of the current system are given in chapter 6.

5.6.

The current system in Hong Kong is an example of the type of registration system where the patent remains dependent on the patent granted elsewhere. It can be differentiated from the other type of registration system the characteristics of which are that on grant the patent is independent of the patent granted elsewhere.

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