Amendments to the specification of a HK patent
10.22.
A general power is given to the proprietor of the HK patent to apply to the court to amend the specification after the grant of the HK patent, but not before grant. Any person may object to such amendment and may attend at the hearing. The applicant will be required to notify the Registrar who may attend at the hearing and make representations (Clause 27). The proposed legislation will provide that no amendment may extend the protection conferred by the HK patent (Clause 76).
10.23.
We have noted that in the United Kingdom such applications are made to the Comptroller of the Patent Office but we consider that for the reasons outlined in paragraph 10.4 above that such applications should be made to the court.
10.24.
In addition to the above procedures we consider that the proprietor of the HK patent should be able to file, without applying to the court, amendments to the specification where a corresponding EP patent has been granted in a designated country of the EPC and the national patent office of that country has made such amendments (Clause 26).
Surrender of HK patent on request of the proprietor.
10.25.
The proprietor of a HK patent will be able to apply to the Registrar to surrender his patent voluntarily. Any person may oppose this and the Registrar may either resolve the issue or refer it to the court. Any decision of the Registrar under these provisions may be appealed to the court. We consider that the voluntary surrender of a patent will not be disputed in many cases and in the majority of these cases could be resolved by the Registrar. As a result we consider it would be simpler and less expensive for applicants if they could make an application to the Registrar instead of to the court (Clause 29).
Property in patents etc.
10.26.
The provisions relating to the property in patents will be based on the 1977 Act to follow the general principles of the current law relating to patents. In line with the general principle referred to in paragraph 10.4 above, any application to rectify the register or to determine the right to a patent after grant will be made to the court and not to the Registrar.
Employees inventions
(Part VI of the proposed Patents Bill)
10.27.
At present in Hong Kong the question of the rights of employees in respect of inventions made during the course of business and compensation to employees in respect of such inventions falls within the province of common law and the law relating to contracts for employment. There are no specific provisions in the Registration of Patents Ordinance and the question as to how far the provisions of the 1977 Act apply in this respect in Hong Kong is discussed in paragraph 6.22.
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