TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 111

Eve of

7 staff

mation

much

if the

Hong

is not

d that It is

invention is defined is the claims which are a set of numbered paragraphs defining, in words, the invention. The wording of the claims is such as to distinguish the invention under the laws of the country concerned. While most patent laws require an invention to be both novel and inventive, the actual definition of these terms varies from country to country. As an example, in the United States a grace period in which an inventor may disclose his invention prior to filing an application is allowed without loss of novelty whereas under the European Patent Convention (EPC) there is no grace period. In Japan, the standard of inventiveness, namely, how different an invention must be from what is known in order to be patentable, is much higher than in the United Kingdom. The rules governing what material can be used and how it can be used in assessing novelty and inventiveness also vary. These differences can result in patents being granted in different jurisdictions for the same invention which have a different scope of protection.

= and

5.13.

s that

Kong

batent

grant

For

anted

rseas

issue

1 the here,

ssues

court

In a similar way, once a patent has been granted, the interpretation of the claims, in assessing what is or is not an infringement, differs from country to country. Differences in claim interpretation are best illustrated by comparison of the pre-EPC approach of the UK and German courts to interpretation of claims. In the UK, a patent claim was interpreted as defining a "boundary fence". What fell within the wording of the claim was an infringement and what did not fall within the wording of the claim was not. There was little scope for interpreting the claim so that the boundary of infringement extended beyond the literal wording. In Germany, on the other hand, a claim was considered to be no more than a signpost directing the addressee to the invention. Thus, in Germany, a claim could be interpreted far more broadly than was immediately evident from its literal wording provided the "inventive concept" embodied in the claim was preserved. Attempts to harmonise these matters have not been particularly successful. For example, United Kingdom courts and German courts have given opposite decisions on the same original European patent.

5.14.

These differences in approach can give rise to significant difficulties when the law and practice of two jurisdictions meet, as would happen if patents were to be registered from more than one jurisdiction in Hong Kong. Such difficulties are illustrated in the following two examples :

(1)

or a

ch a

n, it

law

rom

ring

ach

uch

IOW

the

(2)

5.15.

A United States patent is granted to an applicant who has disclosed his invention just before filing. Under US law such a patent would be valid. However, under the patent law of the EPC, such a disclosure would render a corresponding EPC patent invalid.

A US patent is issued to an applicant and subsequent to the issue, a US application of earlier date is found. Under US law, such an earlier application could be used to invalidate the issued patent for lacking inventiveness. If the applications were filed under the EPC, the earlier dated application, unpublished at the date of the later application, could only be used to upset the later application for lack of novelty.

Assuming patents from the EPC and US were registered in Hong Kong, how are these two examples to be judged? If the rules governing patentability in the US are applied, the patent of example one is valid and the patent of example two is not, whereas if

39