TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 46

RECT

370/20

FROM:

Jill Barrett

Assistant Legal Adviser

K174 270 3381

593

STRY on Taker

DATE:

30 July 1993

Bunten

ME Bunten

HKD

HONG KONG: PATENTS REFORM

1. You asked a number of questions concerning the future development of Hong Kong's patent law. The answers are as follows:

2. The Patents Cooperation Treaty (PCT) does not explicitly say whether Contracting States may nominate more than one receiving Office. Article 10 says that "The international application shall be filed with "the prescribed receiving Office"; according to Article 2, "receiving Office" means "the national office ....with which the international application has been filed; and "national Office" means "the government authority of a Contracting state entrusted with the granting of patents....".

3.

The wording of these provisions implies that the Convention envisages that each State will have only one receiving office. However, although this is normally likely to be the case, since most States have only one piece of territory, I do not think it rules out the possibility that a State could designate more than one authority to act as the receiving office for different purposes.

4. However, the correct interpretation of the Convention requires more than just the wording of the text to be considered, given that the words are open to more than one interpretation. The practice of the parties under the convention is also relevant. If another party has already nominated more than one receiving office, and if the other parties have accepted or acquiesced in that arrangement (by for example applying the provisions of the PCT to patents granted by both or all of the offices in that state), then we could rely on that precedent as evidence of the correct interpretation of the Convention. It is also necessary to consider the overall structure and practical operation of the Convention.

5.

Looking at the overall working of the PCT, I have some doubts as to the practical feasibility of operating two receiving offices. Would it not require both offices to communicate immediately the details of all applications so that both offices have identical sets of information? Would Hong Kong residents be required to apply to the HK Office or could they still choose the UK one, or apply at both? I do not know enough about the technicalities of how the offices operate to

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