TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 78

The proposal for change

1.27.

Hong Kong will have its own legislation and administrative system for the grant and protection of patents. The European patent registered in Hong Kong is to be the basis for the grant of an independent patent. As a second phase the Chinese patent registered in Hong Kong will also be the basis for the grant of an independent patent (paragraphs 9.37 to 9.40). The United Kingdom Patents Act 1977, except the provisions relating to the validity of the patent, is the model for Hong Kong's proposed patent law. The United Kingdom Patents Act 1977 was drafted to be compatible with the European Patent Convention (EPC). The provisions in Hong Kong's proposed patent law determining validity of the patent are to be adopted from the EPC (paragraph 10.2). The procedural requirements for registering the patent in Hong Kong are based on the EPC and take note of international harmonisation proposals. Application to determine the validity of a patent, to rectify or to amend it is to be made to the court (paragraph 10.4). The application for a Hong Kong patent will be a two stage procedure. Application is to be made within six months of publication of the European Patent Application (EPA) in the European Patent Office (EPO) to record the EPA in Hong Kong. The Hong Kong patent application is then completed by applying for grant of the patent in Hong Kong within six months of its grant in the EPO. A translation is to accompany any part of the European patent application or the granted European patent which is not in English. A Hong Kong patent will then be granted to the applicant (paragraphs 10.6 to 10.12). The recordal of the EPA in Hong Kong and the Hong Kong patent, when it is granted, will be published and open to inspection by the public. Notice of the recordal and grant will also be advertised (paragraph 10.13). The term of the Hong Kong patent is 20 years from the date of filing an application for the European patent. The patent is renewable annually after grant in Hong Kong (paragraphs 10.16 to 10.18). The validity of the patent will be open to challenge in Hong Kong. With the exception of post-grant opposition proceedings conducted in the EPO or the European courts, the Hong Kong patent will be unaffected by proceedings outside Hong Kong (paragraphs 10.3, 10.19 to 10.21). Provisions relating to employees' inventions, licences of right and compulsory licences are to mirror those of the Patents Act 1977 subject to appropriate modifications (paragraphs 10.27 to 10.31). The Crown use provisions in Hong Kong's present Registration of Patents Ordinance are to be retained subject to appropriate modifications (paragraph 10.32). The Hong Kong patent will give the same rights against infringement as are given under the present system. The patent rights will arise on publication of the recordal of the EPA in Hong Kong but they cannot be enforced by bringing proceedings until the Hong Kong patent has been granted (paragraphs 10.33 to 10.37). There will be a right of action to restrain groundless threats of action for infringement of a patent (paragraph 10.38).

Transitional provisions

1.28.

Under Hong Kong's proposed patent legislation a European patent application, published in the EPO on or after the commencement date, may be used to apply for a Hong Kong patent (paragraph 10.52). United Kingdom and European patents (UK), granted or applied for before the commencement date, will still be eligible for registration in Hong Kong but the time within which registration must be applied for will be shorter than the present five year period and is likely to be between six and twelve months of the coming into

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