TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 165

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Applications and other pre-grant matters (Part II & III of the proposed Patents Bill)

Introduction

10.6.

An application for a patent in Hong Kong is to be made by the applicant in two stages by

10.7.

(a)

(b)

filing with the Registrar a request to record a copy of the published European Patent Application (EPA) within six months of publication in the EPO in the prescribed manner. Subject to compliance with the formal requirements, the request is recorded, published and subsequently required to be maintained; and

filing with the Registrar after the grant of the corresponding European Patent (EP patent) within six months of the grant of the EP patent in the prescribed manner an application for the grant of a Hong Kong patent (HK patent). Subject to compliance with the formal requirements, the HK patent is granted to the applicant and published.

We consider this two stage approach will enable businessmen and the public to be aware at an early stage of inventions which are intended to be protected in Hong Kong and will do much to remove one of the perceived disadvantages of the current system identified in paragraphs 6.11 and 9.18.

10.8.

In considering the requirements as to filing, we have taken note of the proposals for harmonisation worldwide. They are intended to be properly balanced so that they are easy to comply with, give sufficient but not too much time to make a request or an application, and are relatively simple to administer.

Request to record

10.9.

Clause 3 sets out the person or persons who may request the recordal and make an application for the grant of a HK patent. Provisions are contained in Part XI Clause 72 as to who may be entitled to the invention. An applicant for a request to record and for the grant of a patent who is not the applicant for the EPA or the proprietor of the EP patent must produce an assignment document or other documentary evidence which appears, on the face of it, to establish his right to apply. In order to simplify the application procedures the applicant for a request to record is not required to produce the assignment document if an acknowledgement of his right to apply in Hong Kong is given, on application, by the applicant of the EPA (Clause 4(2)(b)).

10.10.

We have concluded in paragraph 8.18 that English will be the primary language of the future patents system. We therefore consider that the information contained in the EPA and EP patent should be translated into English so that on publication the information is available in English to those searching in Hong Kong. There is not likely to be any widespread knowledge of French and German in Hong Kong and the benefits gained

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