TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 241

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Examination system

13.4.

In the absence of search and examination facilities for the patent system, we consider (as discussed in paragraph 12.3) it would be neither financially viable nor practical to conduct search and examination in Hong Kong solely for petty patents. We therefore do not recommend an examination system for petty patents.

Contracting out examination system

13.5.

This option, as discussed in paragraph 12.4, is not considered to be acceptable. Similar objections apply here as for a system of contracting out search and examination of patents. The objections which we considered in chapter 4 and in paragraph 12.4 are that even with such a system there is still a need to employ a number of staff including skilled examiners. Additionally Hong Kong would not have sufficient control over the quality of patents or the costs involved in the time taken for the patent to be granted. For these reasons we do not recommend a contracting out examination system for petty patents.

Non-examination system

13.6.

A basic non-examination system which allows for the grant of a petty patent on submission of documentation alone, and which does not require either search or examination of the petty patent, has the substantial advantage of allowing for the quick grant of a petty patent at low cost. Against this obvious advantage we have weighed the clear risks of abuse which are inherent in a basic non-examination system. Those risks have been canvassed in some detail in paragraphs 4.7 to 4.12 in the context of patents and in paragraphs 12.6 and 12.7 in relation to petty patents. Essentially, the problem concerns the possibility that commercial activity and litigation would be conducted on invalid patents, a situation which would create uncertainty and could stifle legitimate business. In light of these risks, we do not recommend a basic non-examination system for petty patents.

Non-examination system with a search before grant and additional safeguards

13.7.

We consider that a modified non-examination system which incorporates certain safeguards can provide a system which meets the requirements of business by reducing the risk of abuse to an acceptable level. One safeguard is to require a report of a search of the prior art to be filed before grant. The requirement of search reduces the risks of abuse inherent in a basic non-examination system to some extent, as competitors and the public can check the search report for cited prior art. This may well give them some indication of the validity of the patent, or at least will shorten the process of searching the prior art for material which would invalidate the patent. It will be for the applicant to provide a search report before grant. We consider that additional safeguards on the lines outlined in paras. 12.13 to 12.18 would overcome many of the objections to a basic non-examination system.

13.8.

Compared to a basic non-examination system, the requirement that a search report be submitted will add cost and time to the process of granting a petty patent. Nevertheless, without examination the process will still be quicker and less costly than with examination.

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