to fortify the undertaking. We consider this procedure should be encouraged in cases brought for alleged infringement of a petty patent to discourage abuse of the system.
Right to amend
12.17.
We recognise the difficulty which in Hong Kong the Registrar will have in recruiting and retaining staff with the necessary skill to do other than formal checks of the material which comes before them, and we do not therefore favour the imposition of obligations on the Registrar to check material which comes before him except for formalities. For this reason we consider the applicant will be able to lodge amending material without it being scrutinised by the Registrar. However, problems could arise if an applicant for a petty patent which is not subject to examination has an unrestricted right to amend the patent before grant. We consider that the same restrictions against adding matter in a patent should apply to the amendment of claims in a petty patent whether before or after grant. As with patents, the court should be able to invalidate amendments made before grant to a petty patent, even if the amendments can only be challenged after grant.
12.18.
Similar difficulties apply to amendments of granted patents which have not been examined prior to grant. Amendments to a petty patent after grant should be subject to the same provisions as amendments to a patent after grant. In addition however the patentee should be able to amend his petty patent claims only if he states by declaration in his application for amendment that he has become aware of prior art, or of the significance of prior art, that would prejudice the validity of his petty patent and that he was amending in view of that prior art. In addition the application should be supported by exhibiting the prior art.
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Before coming to our recommendations, we will consider other issues.
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Other issues relating to a petty patent systems
12.19.
Novelty
12.20. We consider that it should not be possible to obtain protection in Hong Kong for what is known elsewhere. Local novelty has limited significance in a place like Hong Kong where manufacturers rely on export sales.
12.21.
Local novelty would also risk attracting to Hong Kong copyists who would obtain a Hong Kong petty patent for inventions already patented elsewhere and would prevent foreign manufacturers from importing them into Hong Kong. For example, someone could see an article in the USA and use the idea underlying the article as the basis of an application for a Hong Kong petty patent. That person would be able to prevent anyone who could legitimately use the article overseas from commercialising the article here. This would jeopardise Hong Kong's position in the international trading community, where as a result of many years of enforcement of a sound system, Hong Kong is now seen as a regime that gives strong protection to intellectual property rights.
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