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Patent Law

1. "Patented invention" means an invention for which a standard patent or, as the case may be, a short-term patent is granted.

Patentable Inventions

2. An invention is patentable if it is susceptible of industrial application, is new and involves an inventive step.

3. The following in particular shall not be regarded as inventions: (a) a discovery, scientific theory or mathematical method; (b) an aesthetic creation; (c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; (d) the presentation of information.

4. A method for treatment of the human or animal body by surgery or therapy and a diagnostic method practised on the human or animal body shall not be regarded as an invention which is susceptible of industrial application .

5. An invention the publication or working of which would be contrary to public order ("ordre public") or morality shall not be a patentable invention; however, the working of an invention shall not be deemed to be so contrary merely because it is prohibited by any law in force in Hong Kong.

6. A plant or animal variety or an essentially biological process for the production of plants or animals, other than a microbiological process or the products of such a process, shall not be patentable.

7. In Hong Kong, there are two types of patent applications, namely, standard patent and short-term patent.

Novelty and Inventive Step

8. An invention shall be considered to be new if it does not form part of the state of the art. The state of the art shall be held to comprise everything made available to the public (whether in Hong Kong or elsewhere) by means of a written or oral description, by use, or in any other way (a) before the deemed date of filing of an application for a standard patent for the invention or, if priority was claimed, before the date of priority; or (b) before the date of filing of an application for a short-term patent for the invention or, if priority was claimed, before the date of priority, whichever is the earlier

9. An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

Standard Patent

10. There are two stages leading to the grant of a standard patent, namely, “Request to Record Stage” and “Request for Registration and Grant Stage”.

11. “Request to Record Stage” - A person entitled to apply for the grant of a standard patent for an invention may, at any time within 6 months after the date of publication of an application in a designated patent office for a patent for the invention, request the Registrar to enter a record of that designated patent application in the register (in this page referred to as a "request to record"). Every such request shall be signed by the applicant and be filed with the Registrar in the prescribed manner and shall contain: (a) a photocopy of the designated patent application as published, that is to say, including any description, claims, drawings, search report or abstract published together with the designated patent application; (b) where the designated patent application does not contain the name of any person as being the inventor, a statement identifying the person or persons whom the applicant believes to be the inventor or inventors; (c) the name and address of the person making the request; (d) where the person filing the request is a person other than the person named as applicant in the designated patent application, a statement explaining his entitlement to apply for the grant of a standard patent for the invention and prescribed documents supporting that statement; (e) where priority is claimed in respect of a right of priority enjoyed in the designated patent office on the basis of an earlier application as mentioned in that section, a statement that indicates the details of- (i) the date of priority claimed and (ii) the country in which the earlier application was filed; (f) where at the time of filing the designated patent application a claim was made in accordance with the law of the designated patent office in respect of any previous disclosure of the invention that was, for the purposes of the law of the designated patent office, a non-prejudicial disclosure, a statement that indicates the prescribed details relating to the previous disclosure; and (g) an address in Hong Kong for service of documents.

12. “Request for Registration and Grant Stage” - where in an application for a standard patent - (a) a designated patent application has been recorded in the register and a request to record has been published and the request to record is not refused or deemed withdrawn or abandoned; and (b) a patent has been granted in the designated patent office in pursuance of the designated patent application, the applicant or his successor in title may request the Registrar to register the designated patent so granted and to grant a standard patent for the invention shown in the published specification of the designated patent. A request for registration and grant shall be made within 6 months after the date of grant of the designated patent by the designated patent office or publication of the request to record, whichever is the later. Every such request shall be filed with the Registrar in the prescribed manner and shall contain- (a) a verified copy of the published specification of the designated patent, including the description, the claims and any drawings published by the designated patent office; (b) if the person filing the request is a person other than the person named in the register as the applicant for a standard patent for the invention, a statement explaining the first-mentioned person's entitlement to apply for the grant of a standard patent for the invention and prescribed documents supporting that statement; (c) where the request to record contains a statement to the effect that priority is claimed on the basis of a right of priority claimed in the designated patent office, such copies as may be prescribed of the documents filed in the designated patent office claiming and supporting such right of priority.

13. If on examination a request for registration and grant is found to have satisfied the prescribed requirements, then the Registrar shall as soon as practicable after such examination - (a) register the designated patent by making an appropriate entry in the register; and (b) grant a standard patent for the invention shown in the published specification of the designated patent and issue a certificate to that effect.

14. A standard patent granted under this Ordinance- (a) shall take effect from the date on which the fact of its grant is advertised in the official journal; and (b) shall remain in force until the end of the period of 20 years beginning with the deemed date of filing of the application for the patent.

Short-Term Patent

15. The Hong Kong patent system provides protection to “petty inventions” by way of grant of “short term patents”. For the purpose of obtaining such patents, there is no need to rely on a foreign patent. The applicant has to submit a patent specification (which includes an abstract, claims and drawings), an official patent search report and priority document (if any). The maximum period of registration is 8 years from the date of application.

Patent Transactions

16. Any patent or application for a patent is personal property, and any patent or any such application and rights in or under it may be transferred, created or granted. Any patent or any such application, or any right in it, may be assigned or mortgaged. Any patent or any such application or right shall vest by operation of law in the same way as any other personal property and may be vested by an assent of personal representatives.

17. A licence may be granted under any patent or any such application for working the invention which is the subject of the patent or the application; and to the extent that the licence so provides, a sub-licence may be granted under any such licence and any such licence or sub-licence may be assigned or mortgaged Any such licence or sub-licence shall vest by operation of law in the same way as any other personal property and may be vested by an assent of personal representatives.

18. Any of the following transactions, that is to say (a) any assignment or mortgage of a patent or any such application, or any right in a patent or any such application; (b) any assent relating to any patent or any such application or right, shall be void unless it is in writing and is signed by or on behalf of the assignor, mortgagor or party granting such assent as the case may be (or, in the case of an assent or other transaction by a personal representative, by or on behalf of the personal representative) or in the case of a body corporate is so signed or is under the seal of that body.

Employees’ Inventions

19. An invention made by an employee shall, as between him and his employer, be taken to belong to his employer if (a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or (b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer's undertaking. (2) Any other invention made by an employee shall, as between him and his employer, be taken for those purposes to belong to the employee.

20. Where it appears to the court on an application made by an employee within the prescribed period that(a) the employee has made an invention belonging to the employer for which a patent has been granted; (b) the patent is (having regard among other things to the size and nature of the employer's undertaking) of outstanding benefit to the employer; and (c) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer, the court may award him compensation. Where it appears to the court on an application made by an employee that (a) a patent has been granted for an invention made by and belonging to the employee; (b) his rights in the invention, or in any patent or application for a patent for the invention, have been assigned to the employer or an exclusive licence under the patent or application for a patent has been granted to the employer; (c) having regard to all the circumstances of the case, including the terms of the contract of assignment or grant or any ancillary contract ("the relevant contract"), the benefit derived by the employee from the relevant contract is inadequate in relation to the benefit derived by the employer from the patent; and (d) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer in addition to the benefit derived from the relevant contract, the court may award him compensation.

Effects of Patent

21. A patent while it is in force shall confer on its proprietor the right to prevent all third parties not having his consent from doing in Hong Kong all or any of the following-

(a) in relation to any product which is the subject-matter of the patent, (i) making, putting on the market, using or importing the product; or(ii) stocking the product, whether for the purpose of putting it on the market (in Hong Kong or elsewhere) or otherwise;

(b) in relation to any process which is the subject-matter of the patent-(i) using the process; or(ii) offering the process for use in Hong Kong when the third party knows, or it is obvious to a reasonable person in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent;

(c) where the invention is a process, then in relation to any product obtained directly by means of that process- (i) putting on the market, using or importing the product; or (ii) stocking the product, whether for the purpose of putting it on the market (in Hong Kong or elsewhere) or otherwise.

22. The rights conferred by a patent shall not extend to- (a) acts done privately for non-commercial purposes; (b) acts done for experimental purposes relating to the subject-matter of the relevant patented invention, etc.

Extent of Invention

23. An invention in respect of which an application for a patent has been filed shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application, as interpreted by the description and any drawings contained in that specification. An invention for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the patent, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or an application for a patent shall be determined accordingly.

Patent Infringement

24. Civil proceedings may be brought in the court by the proprietor of a patent in respect of any act of infringement and in those proceedings a claim may be made- (a) for an injunction restraining the defendant from any apprehended act of such infringement; (b) for an order requiring the defendant to deliver up or destroy any patented product in relation to which the patent is infringed or any article in which the product is inextricably comprised; (c) for damages in respect of the infringement; (d) for an account of the profits derived by the defendant from the infringement; (e) for a declaration that the patent is valid and has been infringed by the defendant.

Revocation of Patent

25. The High Court of Hong Kong may on the application of any person by order revoke a patent for an invention on (but only on) any of the following grounds, that is to say: (a) that the invention is not a patentable invention; (b) that the patent was granted to a person who was not entitled to be granted that patent; (c) that the specification of the patent does not disclose the invention in a manner sufficiently clear and complete for it to be performed by a person skilled in the art; (d) that the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed; (e) that the protection conferred by the patent has been extended by an amendment of the application for the patent or the specification of the patent which is invalid; (f) that the patent is one of 2 standard patents for the same invention, the applications for which were filed by the same person and have the same deemed date of filing; (g) that the patent is one of 2 short-term patents for the same invention, the applications for which were filed by the same person and have the same date of filing; (h) that the patent is one of 2 patents for the same invention, one such patent being a standard patent and the other being a short-term patent, the applications for which were filed by the same person and have the same deemed date of filing or date of filing; and the 2 patents are not under the proprietorship of the same person; (i) in the case of a standard patent, that the corresponding designated patent has been revoked following prescribed opposition or revocation proceedings in the designated patent office.

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