TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 248

Grant of the petty patent.

13.33.

The Registrar will, as soon as the formal requirements have been complied with, proceed with the grant of the petty patent and with its publication, unless the applicant has, at the time of the application or at any time before the grant of the petty patent, requested that grant be deferred for a period of up to six months. (Clause 100(1))

Publication of the specification of the petty patent

13.34.

The petty patent will on grant be published in the same way as a HK patent by laying this open at the registry and the Registrar will advertise the fact of its grant in the Gazette. We consider however that in addition to publication in the normal manner further information should be given to the public in the case of a petty patent. We have therefore provided that the first claim, the abstract and any drawings referred to should also be advertised in the Gazette. (Clause 100(2))

Amendments to the specification of a petty patent application prior to grant

13.35.

We consider that an applicant should have one opportunity to amend the description, claims and drawings of his own volition before grant so that he can, for example, take advantage of any matters arising from the search report. We have provided that the Registrar will be required to accept this and will on grant arrange for the original specification and any amendments to be published. Any such amendments must not result in the extension of the subject matter contained in the application as filed. (Clause 101)

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13.38.

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13.39.

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13.40. relating to

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13.41. Clauses 71

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13.42.

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Amendments to the specification of a petty patent after grant.

13.36.

We consider that the proprietor of a petty patent should have the same general power to apply to the court to amend the specification after the grant of the petty patent as the proprietor of a HK patent. The provisions of Clause 27 of the proposed Patents Bill will therefore also apply to a petty patent. Any person may object to such amendment and may attend at the hearing before the court (Clauses 27 and 103(1)). In addition in the case of amendments to a petty patent after grant we consider there should be Rules which would provide that any application to the court must be supported by a declaration setting out the reasons for the amendment and exhibiting the prior art. The provisions as to amendment in certain circumstances as contained in Clauses 20, 24 and 26 of the proposed Patents Bill will not apply to a petty patent. (Clause 103(2))

Onus of proof

13.37.

We consider that, as a petty patent will not have been examined prior to grant, the proprietor of a petty patent should be required, in any proceedings before the court to enforce his rights under the provisions of the proposed Patents Bill, to establish to the satisfaction of the court the validity of the patent. (Clause 102)

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