LegCo Paper No. CB(1)381/96-97
(These minutes have been
seen by the Administration)
Ref : CB1/BC/54/95/1
Bills Committee on Patents Bill
Minutes of Meeting held on Monday, 4 November 1996 at 2:30 p.m. in Conference Room B of the Legislative Council Building
Members present :
Hon Ambrose LAU Hon-chuen, JP (Chairman)Members absent :
Hon Mrs Selina CHOW, OBE, JP
Dr Hon HUANG Chen-ya, MBE
Hon CHAN Kam-lam
Dr Hon LAW Cheung-kwok
Hon SIN Chung-kai
Hon NGAI Shiu-kit, OBE, JPPublic officers attending:
Hon Ronald ARCULLI, OBE, JP
Hon Paul CHENG Ming-fun
Hon Margaret NG
Clerk in attendance :
- Augustine CHENG
- Deputy Secretary for Trade and Industry
- Mr R J Perera
- Acting Director of Intellectual Property
- Mr Patrick NIP
- Principal Assistant Secretary for Trade and Industry
- Mr Jonathan Abbott
- Senior Assistant Law Draftsman
- Mrs Flora CHENG
- Assistant Director of Intellectual Property
- Mr Ben LEUNG
- Assistant Secretary for Trade and Industry
- Mrs Dora LI
- Chief Intellectual Property Examiner
Staff in attendance :
- Miss Odelia LEUNG
- Ms Kitty CHENG
- Ms Sarah YUEN
I. Election of Chairman
1. Hon LAU Hon-chuen was elected Chairman of the Bills Committee.
II. Meeting with the Administration
(LegCo Paper No. CB(1)230/96-97)
2. Mr R J Perera made a slide presentation on the Administration's legislative proposal for the establishment of a new patent registration system for Hong Kong. Under the new system, Hong Kong would be able to grant a patent on the basis of the registration of a patent granted by any of the three patent offices to be designated. The proposed designated patent offices (DPOs) were the United Kingdom Patent Office, the European Patent Office (in respect of patents designating the UK) and the Chinese Patent Office. Once granted by the Patent Registry in Hong Kong, the patent would become a Hong Kong patent independent of the original patent granted elsewhere. To qualify for patent protection an invention must be new, involve an inventive step and be industrially applicable. The disclosure of this new technology was of public benefit and provided a major source of technical information to many users. A standard patent would remain in force for 20 years. The new patent registration system would also provide for the grant of a short-term patent for an invention on an original application. The proposed patent system would have the advantage of providing Hong Kong with an independent patent system which was cost effective, well-respected and in line with international standards.
3. Mr Augustine CHENG and Mr Patrick NIP then briefed members on the background and objective of the Bill. They advised that the object of the Bill was to establish a new patent law with a view to complying with Article 139 of the Basic Law which required the Hong Kong Special Administrative Region to have its own law to protect inventions from 1 July 1997. The new local law was necessary because the existing patent registration law was dependent on United Kingdom patent law and Hong Kong was obliged to provide patent protection for inventions both under the Paris Convention, which would continue to be applied to Hong Kong after 1997, and under the Agreement of Trade-Related Aspects of Intellectual Property Rights of the World Trade Organisation. A Patent Steering Committee (PSC) was established in 1986 and issued a report in 1993 which made recommendations for the patent system in Hong Kong. The PSC report which incorporated a model Patents Bill was issued for consultation to industrial, academic and professional bodies in May 1993. There was broad support for the proposals. Major employee organisations and labour groups were consulted in May 1994 specifically on the PSC proposals relating to employees' inventions. All members of the former PSC and those organisations which responded to the first consultation were consulted again in January 1996 on the draft Bill. The Administration had also informed those organisations which did not respond to the consultation in 1993 and 1994 about the availability of a consultation draft of the Bill. Comments received had as far as possible been reflected in the Patents Bill. Depending on members' views on some provisions of the Bill on which no consensus had been reached, the Administration would consider the need for amendment.
4. In response to members' request for further details on public consultation, Messrs CHENG and NIP supplemented that the Administration had consulted the Federation of Hong Kong Industries, The Chinese Manufacturers' Association of Hong Kong, Hong Kong Association of Banks, the Consumer Council, Hong Kong Productivity Council, Industry and Technology Development Council, institutes of tertiary education including the Law Department of the University of Hong Kong, chambers of commerce of overseas countries including those of the United States, Canada, the United Kingdom, the Netherlands, India, Japan, France, and Germany, and major employee organisations and unions like Hong Kong Federation of Trade Unions, Federation of Hong Kong and Kowloon Labour Unions, and unions of civil servants, etc. At the Chairman's request, the Administration agreed to provide the Bills Committee with a list of organisations which they had consulted on the PSC Report and on the draft Bill, together with their major concerns. This would serve as a basis for future deliberations by the Bills Committee.
5. Messrs CHENG and NIP emphasised that the Bill had already incorporated most of the recommendations made by the PSC and as far as possible the comments received during the two consultation exercises. The following were two examples -
- The duration of a short-term patent had been extended from six years to eight years in response to comments that six years were too short. The amendment was in line with international practices.
- Under the proposed system, short-term patents would be granted with a formality examination only and with no substantive search and examination before grant. As this would put the responsibility for establishing the validity of the patent on the courts, some commentators had expressed concern about possible abuses. The Administration had therefore included some additional safeguards against abuse. A particular feature was that an applicant would be required to file with the Registrar, before grant and publication of the short-term patent, a search report made by an authorised searching authority (clause 113(1)(d) and (8)). This would give information to users as to the prior art and assist in assessing the validity of the short-term patent. Clause 119 provided that an applicant might request for deferral of the grant of a short-term patent for six months after the date of filing of the application. To allow the applicant more time to assess the marketability of the product or process to be patented, the Administration was prepared to amend the clause to extend the period to one year. Although the search report requirement might lead to additional costs, the Administration considered that on balance the benefit of patent protection would outweigh the costs incurred.
6. In reply to members' enquiries about any dissenting views received on the Bill, representatives of the Administration stated that the Law Society of Hong Kong had expressed concern over clause 73(2) which specifically excluded patented products in transit from patent protection. The Administration was open-minded on the issue. Should members consider it appropriate that provisions relating to patented products in transit and patented products in transhipment should be treated alike and be left to the common law, the Administration would delete the subclause. In addition, some parties had queried why the US Patent Office was not included on the list of DPOs. Due to the differences between the US patent system and the local patent registration system, the Administration decided not to designate the US Patent Office.
7. In response to Dr HUANG Chen-ya's questions, Mr Patrick NIP said that developers of new varieties of crops would be granted rights under the Plant Varieties Protection Ordinance (Ordinance No. 21 of 1996) recently enacted, which would provide for a registration system of new plant varieties. Also, in line with international practices, computer programs were not regarded as patentable inventions. These would however be protected under copyright law as literary works.
8. On Mrs Selina CHOW's concern about the cost for applying for registration under the new patent registration system, representatives of the Administration said that the Administration had already sought funding approval from the Finance Committee for the installation of a computer system to operate and manage the new patent registration system. The existing registration system already operated on a full cost recovery basis. At present, the cost for registration of a patent was $1,800. The Administration did not envisage a significant increase in charges under the new registration system as the costs for the computer system would be recovered over a five-year period to smooth out the increases. At members' request, the Administration would provide further information on the differences in costs incurred for applying for a standard patent and a short-term patent under the current law and the Patents Bill, if enacted.
9. Addressing the Chairman's questions about consultation with the Chinese side, Messrs CHENG and NIP said that agreement had been reached in the Sino-British Joint Liaison Group (JLG) XXXIV Plenary Meeting held in early November 1995 that Hong Kong should have its own laws to protect intellectual properties including patent, copyright and design. The Meeting agreed on the basis of the new independent patent system for the protection of inventions in Hong Kong and for short-term patents to protect inventions with only a short-term commercial life. The Chinese side had agreed on the substance of the Bill but had some views on technicalities, for example on the definition of "convention country". The Administration intended to amend this definition under clause 2 to differentiate between countries to the Paris Convention and members to the World Trade Organisation Agreement.
III. Date of next meeting
10. The next meeting was scheduled for 22 November 1996 at 8:30 a.m. to meet the Law Society of Hong Kong and to examine the Bill parts by parts.
(Post-meeting Note: The meeting was subsequently rescheduled for 26 November 1996 at 8:30 am)
The meeting ended at 3:30 p.m.
Legislative Council Secretariat
22 November 1996
Last Updated on 16 December 1998