TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 112

the rules governing patentability of the EPC are applied, the reverse is the case. The only consistent approach is to adopt either the highest common multiple or lowest common denominator and in these cases the applicant either risks the uncertainty that the Hong Kong registration of his granted patent will be invalid in Hong Kong because the standards of patentability here are higher or that he would not be able to obtain a patent in the first place even though the invention would be patentable if registered in Hong Kong. Although these examples are somewhat simplistic, they do illustrate the general nature of problems which will inevitably arise if patents are registered from more than one jurisdiction.

5.16.

A further point on registration of patents from more than one system concerns the problem of conflict of rights. National and regional systems which examine patent applications for patentability do prevent patents being granted to different parties for the same invention. However, no patent office can make a cross-check of unpublished patent applications filed in another patent office to ascertain whether they conflict with any applications filed with them. Thus, patents could be granted in different jurisdictions for the same invention in the names of different proprietors. If patents from those jurisdictions were to be registered in Hong Kong, a situation would arise where two patents would be registrable for the same invention. That would create uncertainty and clearly not be in the public interest. The uncertainty would require a forum for resolution of such conflicts and, at least until any new patent law became established, would impose an additional burden on the Court.

5.17.

There are clear disadvantages with registering the patents from more than one system. It may also be argued that there can be disadvantages in registering the patents of the system of only one country, because that country could, for perfectly legitimate reasons, change its system in a manner not acceptable to the country which registers its patents. It could be very difficult for the country which registers the patents to adapt with sufficient speed to the changes.

Registration systems - the different options

5.18.

The various methods of providing for a registration system are set out below. We explore these methods and their implications in paragraphs 5.19 to 5.50 below.

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5.20.

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5.21.

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5.22.

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(a)

Registration of patents granted by any patent office;

(b)

Registration of patents granted by any patent office which searches and examines its patents; and

5.23.

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(c)

Registration of patents granted by a single patent office which searches and examines its patents.

Registration of patents granted by any patent office

5.19.

This option would permit the registration in Hong Kong of a patent which had been granted by a patent office anywhere in the world. Although this option does not strictly

40

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5.24.

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