TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 76

1.18.

A registration system, such as Hong Kong's present system, has the advantage that a patent examined and granted elsewhere is registered by the registering patent office without the need for that office to have search and examination staff and a comprehensive information centre (paragraphs 5.1 to 5.8). However, where the registered patent remains dependent on the continued existence of the patent originally granted, issues of validity, amendment, rectification and revocation of the patent cannot be adjudicated locally (paragraphs 5.2, 5.9). This is a disadvantage of Hong Kong's present system (paragraph 6.23).

1.19.

Our assessment of these options is that patent protection in Hong Kong must continue to be by way of examined patent. The only feasible way of having examined patents, at a cost which is relative to the size of the market in which protection is sought, is by registration. The examined patent registered in Hong Kong is to be the basis for the grant of an independent patent, unaffected by proceedings elsewhere and capable of being challenged for invalidity and of being amended, rectified or revoked in Hong Kong.

The need for a strong patent system

1.20.

Despite the limited use made in Hong Kong of the patent system, the importance of having a modern, strong and well respected patent system is considerable. Failure to provide strong intellectual property protection discourages investors from entering markets where their goods are unprotected. An inadequate patent system discourages research and development and high-technology enterprise (paragraphs 7.17 to 7.27). Failure to meet international standards for intellectual property rights risks the imposition of trade sanctions (paragraph 8.10).

Characteristics of the patent to be registered

1.21.

We have considered the requisite characteristics of the patent to be registered in Hong Kong. In addition to being an examined and well respected patent, it should have been granted in a place which has a strong market and a high level of trade with Hong Kong and whose patent office has a high number of applications from Hong Kong and Hong Kong's major trading partners. It will help businessmen, whether from Hong Kong or overseas, if they can register in Hong Kong a patent which they had in any event intended to obtain in that market (paragraphs 5.26 to 5.38).

1.22.

The standards for patentability and the ambit of protection under Hong Kong's present patent system conform with international standards (paragraphs 5.39 to 5.43). Hong Kong's participation in the "Trade Related Aspects of Intellectual Property" (TRIPs) negotiations, assuming a TRIPS agreement is adopted, will require Hong Kong's patent system, and therefore any patent registered here, to continue to meet international standards (paragraphs 8.10, 8.26).

4

1