TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 242

Recommendations

13.9.

For the reasons set out in paras. 11.46 and 11.47, we recommend that Hong Kong introduce a petty patent system. Whilst we recognise that there are disadvantages with a non-examination petty patent system, we consider that with appropriate safeguards the advantages of providing protection in this way for short-term products clearly outweighs the disadvantages. We therefore recommend that the system be a modified non-examination system which provides for the filing of a search report before grant and incorporates other safeguards. The term of protection should be six years.

13.10

We recommend that the proposed petty patent system should have the following basic characteristics -

(a)

(b)

(c)

(d)

(e)

(f)

as this will be a non-examination system, application for the grant of a petty patent should be made to the Registrar who should only be required to examine the application to ensure that it complies with the formal requirements. The Registrar should not be required to conduct a search for novelty or a substantive examination for patentability;

the formal requirements for an application for the grant of a petty patent should be based on the EPC or the 1977 Act and be compatable with those proposed for the grant of a HK patent under the proposed Patents Bill outlined in Chapter 10. They should be designed so as to enable the patent to be granted quickly and cost effectively;

an application for the grant of a petty patent should be supported by a search report prepared by a prescribed searching authority. If the search report is not filed within the time prescribed the application should be deemed withdrawn and no grant should be made;

although the formal requirements of the specification as to the description, the claims and the drawings should follow the requirements of the EPC only one independent claim and four subsidiary claims may be validly claimed for the invention in a petty patent application;

the substantive requirements as to the patentability of a petty patent including the subject matter for which a petty patent can be granted should be the same as those recommended for a HK patent under the proposed Patents Bill. Thus a petty patent should be able to be granted for substances such as chemicals and drugs;

the scope of protection (in other words, the activities which would infringe) should be the same as those recommended for a HK patent under the proposed Patents Bill;

1

S

jɩ

g

r

e

b

170