REGISTRATION OF PATENTS ORDINANCE

REGISTRATION OF PATENTS ORDINANCE

LAWS OF HONG KONG

REGISTRATION OF PATENTS ORDINANCE

CHAPTER 42





CHAPTER 42

REGISTRATION OF PATENTS ORDINANCE

ARRANGEMENT OF SECTIONS

Section..................................... Page

1...........Short title ................... ... . ... ... ... ... ... 2

2...........Interpretation ................... ... ... ... ... ... ... ... ... ... 2

3.........................Application for registration of patent ... ... ... ... 2
4.........................Application to be accompanied by certain documents ... ... ... ...
3

5.......................Issue of certificate of registration ... ... ... ... ... ... ... ... 3
6.......................Nature of rights conferred by registration ... ... ... ... ... ... ... 3
7.......................Period of rights conferred by registration ... ... ... ... ... ... .... 3

7A........Crown ........................... ... ... ... ... ... ... ... ... 3

7B.................................Use of patented inventions for the services of the Crown ... ... ... 4

7C..........................Right of third parties in respect of Crown use ... ... ... ... ... ... 5

7D........................Reference of disputes as to Crown use ... ... ... ... ... ... ... 6

8. Power to declare exclusive privileges not acquired ... ... ... ... ... 7

9. Amendment of specification or drawings .... ... ... ... ... ... ... 8

10...................Registration of assignment, etc . ... ... ... ... ... ... ... ... ... 8

11. Power to make rules prescribing procedure and fees ... ... ... ... ... 8





CHAPTER 42

REGISTRATION OF PATENTS

Toconsolidate and amend the law relating to the registration of
Patents. (Amended, 25 of 1979, s. 2)

[9 December 1932.]

1. This Ordinance may be cited as the Registration of Patents
Ordinance.

(Amended, 25 of 1979, s. 3)

2. In this Ordinance, unless the context otherwise requires-

'comptroller' means the Comptroller-General of Patents, Designs and
Trade Marks in the United Kingdom;

'European patent (MA)'' means a patent granted under the Convention
on the Grant of European Patents and designating the United
Kingdom;

.,patent' means a patent granted under the Patents Act 1949 or under
the Patents Act 1977 and means also a European patent (UK) that
has effect in the United Kingdom pursuant to section 77 of the
Patents Act 1977;

'priority date' has the meaning assigned to it

(a)in the case of a patent under the Patents Act 1949, by section 5
of that Act;

(b)in the case of a patent under the Patents Act 1977, by section 5
of that Act; and

(c)in the case of a European patent (UK), by section 5 of the
Patents Act 1977, subject to the incidents and modifications
mentioned in section 78 of that Act;

'Registrar' means the Registrar of Patents

(Replaced, 27 of 1958, s. 2. Amended, 25 of 1979, s. 4)

3. (1) Any person being the grantee of a patent, or any person
deriving his right from such grantee by assignment, transmission or
other operation of law, may, within 5 years from the date of grant of the
patent, apply to have such patent registered in Hong Kong. Where any
partial assignment or transmission has been made all proper parties shall
be joined in the application for registration. (Amended, 27 of 1958, s. 3
and 25 of 1979, s. 5)

(2) In this section---thedate of grant' means-

(a) in relation to a patent under the Patents Act 1949, the date
of sealing of the patent under section 19 of that Act;





(b)in relation to a patent under the Patents Act 1977, the date
upon which the patent takes effect pursuant to section 25 of
that Act; and

(c)in relation to a European patent (UK), the date upon which the
patent takes effect in the United Kingdom pursuant to section
77 of the Patents Act 1977. (Added, 25 of 1979,s.5)

4. An application under this Ordinance shall be accompanied by

(a)in the case of a patent the specification of which was published
in a language other than English, a certified copy of the
translation into English of the specification; or

(b) in any other case, a certified copy of the specification,

together with the drawings (if any) relating to the patent and a certificate
of the comptroller giving full particulars of the grant of the patent or of
its taking effect in the United Kingdom on such specification.

(Replaced, 25 of 1979, s. 6)

5. Upon such application being received, together with the
documents mentioned in section 4, and upon payment of the prescribed
fees and of the cost of any prescribed advertisement, the Registrar shall
issue a certificate of registration.

(Amended, 27 of 1958, s. 4)

6. Such certificate of registration shall confer on the applicant
privileges and rights, subject to all conditions established by the law of
Hong Kong, as though the patent had been granted in the United
Kingdom with an extension to Hong Kong.

(Amended, 25 of 1979, s. 7)

7. The privileges and rights so granted shall date from the
commencement of the term of the patent in the United Kingdom and
shall continue in force only so long as the patent remains in force in the
United Kingdom:

Provided that no action for infringement shall be entertained in
respect of any act done prior to the date of issue of the certificate of
registration in Hong Kong.

(Amended, 25 of 1979, s. 8)

7A. Subject to the provisions of this Ordinance and of section 5(3)
of the Crown Proceedings Ordinance, a certificate of registration,
whether issued before or after the commencement* of the Registration
of United Kingdom Patents (Amendment) Ordinance 1968, shall, after
the commencement of that Ordinance, have the same effect against the
Crown as it has against a subject.

(Added, 24 of 1968, s. 2)





7B. (1) (a) Notwithstanding anything in this Ordinance or any other
law, the Government, and any person authorized in writing by
the Governor, may use any patented invention for the services
of the Crown in accordance with the following provisions of
this section.

(b)An invention for which a patent has been granted or has taken
effect in the United Kingdom shall, upon the issue of a
certificate of registration of such patent under this Ordinance
(but not any earlier) become a patented invention for the
purposes of this section, and shall remain a patented invention
only for so long as the patent remains in force in the United
Kingdom, save that if a declaration is made under this
Ordinance that the exclusive privileges and rights conferred by
such certificate have not been acquired the invention shall not
be or be regarded as having been a patented invention within
the meaning of this section. (Amended, 25 qf 1979, s. 9)

(2) If and so far as the patented invention has before its priority date
been duly recorded by or tried by or on behalf of any department of Her
Majesty's Government in the United Kingdom or the United Kingdom
Atomic Energy Authority or the Government otherwise than in
consequence of the communication thereof directly or indirectly by the
person or persons entered as grantee or proprietor of the patent on the
register of patents kept pursuant to the Patents Act 1977 or by any
person from whom he derives title, any use of the invention by virtue of
this section may be made free of any royalty or other payment to the
person entitled under the relevant certificate of registration issued under
this Ordinance to the privileges and rights conferred by such certificate.
(Amended, 25 of 1979, S. 9)

(3) If and so far as the patented invention has not been so recorded
or tried as aforesaid, any use of the invention made by virtue of this
section at any time after the issue under this Ordinance of the certificate
of registration of the patent granted for that invention, or in
consequence of any such communication as aforesaid, shall be made
upon such terms as may be agreed upon, either before or after the use,
between the Government and the person entitled under the certificate of
registration to the privileges and rights conferred thereby, or as may in
default of agreement be determined by the court on a reference under
section 7D.

(4) The authority of the Governor in respect of a patented invention
may be given under this section either before or after the certificate of
registration of the patent for the invention is issued and either before or
after the acts in respect of which the authority is given are done, and
may be given to any person whether or not he is authorized directly or
indirectly by the person entitled under the certificate of registration to
the privileges and rights conferred thereby to use the invention.





(5) Where any use of a patented invention is made by the
Government, or by any person with the authority of the Governor, under
this section, then, unless it appears to the Governor that it would be
contrary to the public interest so to do, the Chief Secretary shall notify
the holder of the certificate of registration issued under this Ordinance
as soon as is practicable after the use is begun, and furnish him with
such information as to the extent of the use as he may from time to time
require.

(Added, 24 of 1968, s. 2)

7C. (1) In relation to any use of a patented invention, within the
meaning of section 7B(I)(b), made for the services of the Crown

(a)by the Government, or by a person authorized by the Governor
under section 7B; or

(b)by the person entitled under the certificate of registration to the
privileges and rights conferred thereby, to the order of the
Government,

the provisions of any licence, assignment or agreement made, whether
before or after the commencement* of the Registration of United
Kingdom Patents (Amendment) Ordinance 1968, between the person
entitled under the certificate of registration to the privileges and rights
conferred thereby, or any person who derives title from him or from
whom he derives title, and any person other than the Government shall
be of no effect so far as those provisions restrict or regulate the use of
the invention, or any model, document or information relating thereto, or
provide for the making of payments in respect of any such use, or
calculated by reference thereto.

(2) Where an exclusive licence granted otherwise than for royalties
or other benefits determined by reference to the use of the invention is
in force in the Colony, then

(a)in relation to any use of the patented invention which, but for
the provisions of this section and section 7B, would constitute
an infringement of the rights of the licensee, section 7B(3) shall
have effect as if for the reference to the person entitled under
the certificate of registration to the privileges and rights
conferred thereby there were substituted a reference to the
licensee; and

(b)in relation to the use of the patented invention by the licensee
by virtue of an authority given under section 7B, that section
shall have effect as if the said subsection (3) were omitted.

(3) Subject to the provisions of subsection (2), where the patent
has been assigned to the person entitled under the certificate of
registration thereof to the privileges and rights conferred by such
certificate in consideration of royalties or other benefits determined by
reference to the use of the patented invention, then





(a)in relation to any use of the invention by virtue of section
7B, subsection (3) of that section shall have effect as if the
reference to the person entitled under the certificate of
registration to the privileges and rights conferred thereby
included a reference to the assignor, and any sum payable
by virtue of that subsection shall be divided between the
person entitled as aforesaid and the assignor in such pro-
portion as may be agreed upon between them or as may in
default of agreement be determined by the court on a
reference under section 7D; and
(b)in relation to any use of the invention made for the services
of the Crown by the person entitled under the certificate of
registration to the privileges and rights conferred thereby
to the order of the Government, section 7B(3) shall have
effect as if that use were made by virtue of an authority
given under that section.

(4) Where, under section 7B(3), payments are required to be
made by the Government to a person entitled under a certificate of
registration to the privileges and rights conferred thereby in respect
of any use of patented invention, any person, being the holder of an
exclusive licence in force in the Colony (not being such a licence as
is mentioned in subsection (2) of this section) authorizing him to
make that use of the invention, shall be entitled to recover from the
person entitled under the certificate of registration to the privileges
and rights conferred thereby such part (if any) of those payments as
may be agreed upon between that person and the person entitled as
aforesaid to the said privileges and rights, or as may in default of
agreement be determined by the court under section 7D to be just
having regard to any expenditure incurred by that person-

(a) in developing the said invention; or
(b)in making payments to the person entitled as aforesaid to
the said privileges and rights, other than royalties or other
payments determined by reference to the use of the inven-
tion, in consideration of the licence,

and if, at any time before the amount of any such payment has
been agreed upon between the Government and the person entitled
as aforesaid to the said privileges and rights that person gives notice
in writing of his interest to the Chief Secretary, any agreement as to
the amount of that payment shall be of no effect unless it is made
with his consent.
(Added, 24 of 1968, s. 2)

7D. (1) Any dispute as to the exercise by the Government or a
person authorized by the Governor of the powers conferred by
section 7B, or as to terms for the use of a patented invention for the
services of the Crown thereunder, or as to the right of any person to
receive any part of a payment made in pursuance of subsection (3) of
that section, may be referred to the High Court by either party to
the dispute in such manner as may be prescribed by rules of court.





(2) In any proceedings under this section in which the Attorney
General represents the Crown or the Government, the Attorney General
may

(a)if the person entitled under the relevant certificate of
registration to the privileges and rights conferred thereby is a
party to the proceedings, apply for a declaration, on any of
grounds upon which such a declaration may be made under
section 8, that the exclusive privileges and rights conferred by
such certificate of registration have not been acquired;

(b)in any case, put in issue the validity of the certificate without
applying for such a declaration as aforesaid.

(3) If in such proceedings as aforesaid any question arises whether
an invention has been recorded or tried as mentioned in section 7B, and
the disclosure of any document recording the invention, or of any
evidence of the trial thereof, would in the opinion of the Governor be
prejudicial to the public interest, the disclosure may be made
confidentially to counsel for the other party or to an independent expert
mutually agreed upon.

(4) In determining under this. section any dispute between the
Government and any person as to terms for the use of an invention for
the services of the Crown, the court shall have regard to any benefit or
compensation which that person or any person from whom he derives
title may have received, or may be entitled to receive, directly or
indirectly from the Government in respect of the invention in question.

(5) In any proceedings under this section the court may at any time
order the whole proceedings or any question or issue of fact arising
therein to be referred to a special referee or an arbitrator on such terms
as the court may direct; and references to the court in the foregoing
provisions of this section shall be construed accordingly. (Added, 24 of
1968, s. 2)

8. (1) The High Court shall have power, upon the application of any
person who alleges that his interests have been prejudicially affected by
the issue of a certificate of registration, to declare, on any of the grounds
upon which the patent might be revoked or treated as revoked under the
law for the time being in force in the United Kingdom, that the exclusive
privileges and rights conferred by such certificate of registration have
not been acquired. (Amended, 25 of 1979, s. 10)

(2) Such grounds shall be deemed to include the manufacture, use
or sale of the invention in the Colony before the priority date applicable
to the patent in the United Kingdom, but not to include the manufacture,
use or sale of the invention in the Colony by some person or persons
after the priority date applicable to the patent in the United Kingdom and
before the date of the issue of the certificate of registration under section
5. (Replaced, 27 of 1958, s. 5. Amended, 25 of 1979, s. 10)





9. Whenever the specification or drawings of a patent regis-
tered in Hong Kong has or have been amended or treated as
amended, according to the law of the United Kingdom, a request,
accompanied by a copy of the specification and drawings (if any) as
amended, or a copy of the translation into English of the amend-
ment, as the case may be, duly certified by the comptroller, may be
made to the Registrar to substitute the specification and drawings as
amended for the specification and drawings originally filed.
(Replaced, 25 of 1979, s. 11)

10. Where a person becomes entitled by assignment, transmis-
sion or other operation of law to the privileges and rights conferred
by a certificate of registration or to any interest therein, he may make
application in the prescribed manner to the Registrar for the entry
on the register of such assignment, transmission or other instrument
affecting the title, or giving an interest therein.
(Amended, 27 of 1958, s. 4)

11. The Registrar may make such rules and do such things as
he may think expedient, subject to the provisions of this Ordinance,
for prescribing the procedure under this Ordinance and the fees to
be paid in respect of proceedings under this Ordinance:

Provided that no such rules shall come into operation until the
same have been approved by the Legislative Council and published
in the Gazette.
Originally 42 of 1932. (Cap. 42, 1950.) 9 of 1950. 18 of 1950. 27 of 1958. 24 of 1968. 25 of 1979. Short title. Interpretation. 1977 c. 37, s. 130. 1977 c. 37, s. 130. (1949 c. 87.) (1977 c. 37.) (1949 c. 87.) (1977 c. 37.) (1977 c. 37.) Application for registration of patent. (1949 c. 87.) (1977 c. 37.) (1977 c. 37.) Application to be accompanied by certain documents. Issue of certificate of registration. Nature of rights conferred by registration. Period of rights conferred by registration. Crown. 1949 c. 87, s. 21(2). (Cap. 300.) (24 of 1968.) [*28.6.68.] Use of patented inventions for the services of the Crown. 1949 c. 87, s. 46(1), (2), (3), (4), (5) and (7). See 1954 c. 32, 3rd Sch. (1977 c. 37. Right of third parties in respect of Crown use. 1949 c. 87, s. 47. [*28.6.68.] (24 of 1968.) Reference of disputes as to Crown use. 1949 c. 87, s. 48. Power to declare exclusive privileges not acquired. Amendment of specification or drawings. Registration of assignment, etc. Power to make rules prescribing procedure and fees.

Originally 42 of 1932. (Cap. 42, 1950.) 9 of 1950. 18 of 1950. 27 of 1958. 24 of 1968. 25 of 1979. Short title. Interpretation. 1977 c. 37, s. 130. 1977 c. 37, s. 130. (1949 c. 87.) (1977 c. 37.) (1949 c. 87.) (1977 c. 37.) (1977 c. 37.) Application for registration of patent. (1949 c. 87.) (1977 c. 37.) (1977 c. 37.) Application to be accompanied by certain documents. Issue of certificate of registration. Nature of rights conferred by registration. Period of rights conferred by registration. Crown. 1949 c. 87, s. 21(2). (Cap. 300.) (24 of 1968.) [*28.6.68.] Use of patented inventions for the services of the Crown. 1949 c. 87, s. 46(1), (2), (3), (4), (5) and (7). See 1954 c. 32, 3rd Sch. (1977 c. 37. Right of third parties in respect of Crown use. 1949 c. 87, s. 47. [*28.6.68.] (24 of 1968.) Reference of disputes as to Crown use. 1949 c. 87, s. 48. Power to declare exclusive privileges not acquired. Amendment of specification or drawings. Registration of assignment, etc. Power to make rules prescribing procedure and fees.

https://oelawhk.lib.hku.hk/items/show/2289

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