LegCo Paper No. CB(1)1186/96-97
(These minutes have been seen by the Administration)
Ref: CB1/BC/54

Bills Committee on Patents Bill

Minutes of meeting
held on Tuesday, 11 March 1997,
at 2:30 pm
in Conference Room B of
the Legislative Council Building

Members present :

    Hon Ambrose LAU Hon-chuen, JP (Chairman)
    Hon Mrs Selina CHOW, OBE, JP
    Hon Ronald ARCULLI, OBE, JP
    Hon Margaret NG
    Hon SIN Chung-kai

Members absent :

    Hon NGAI Shiu-kit, OBE, JP
    Dr Hon HUANG Chen-ya, MBE
    Hon CHAN Kam-lam
    Hon Paul CHENG Ming-fun
    Dr Hon LAW Cheung-kwok

Public officers attending :

Mr Augustine CHENG
Deputy Secretary for Trade and Industry
Director of Intellectual Property (Atg.)
Mr Patrick NIP
Principal Assistant Secretary for Trade and Industry
Mr Ray Perera
Assistant Director of Intellectual Property
Assistant Secretary for Trade and Industry
Miss Magdalene LING
Chief Intellectual Property Examiner

Clerk in attendance :

Miss Odelia LEUNG,
Chief Assistant Secretary (1)1

Staff in attendance :

Ms Kitty CHENG,
Assistant Legal Adviser 2
Ms Sarah YUEN,
Senior Assistant Secretary(1)1

I Matters arising from last meeting

(Annex A to LegCo Paper No. CB(1)1010/96-97)

Members went through the written examples provided by the Administration to clarify the differences between clauses 62(1)(a) and 62(6). In response to the Chairman’s questions on clause 62(6)(a), the Assistant Director of Intellectual Property (AD of IP) explained that clause 62(6) was designed to provide an exception to the restrictions that would be void under clause 62(1)(a). Clause 62(1)(a) covered situations in relation to acquisition of products other than the patented one. Clause 62(6)(a) addressed situations outside the scope of clause 62(1)(a). Under clause 62(6)(a), a condition of a contract that prohibited a person supplied with patented products from selling goods other than those supplied by the patentee was permitted.

2. The Deputy Secretary for Trade and Industry (DS/T&I) further reported that the Administration had sought clarification from the Law Society of Hong Kong (LS) regarding its latest views on clause 62. LS accepted the clause as it was drafted.

II Clause-by-clause examination of provisions for standard patents

(Annex B to LegCo Paper No. CB(1)1010/96-97 and a list of proposed Committee stage amendments (CSAs) tabled and circulated to members vide LegCo Paper No. CB(1)1062/96-97)

3. Members examined the Bill clause by clause with reference to the list of proposed CSAs. DS/T&I said that the Administration was exchanging views with the Chinese side regarding necessary amendments to provisions relating to the Patent Co-operation Treaty (PCT) to bring the proposed local system compatible with the arrangements for international applications. He assured members that the amendments under consideration were technical and procedural in nature. The Administration would inform the Bills Committee once a decision had been made.

Part I - Preliminary (clauses 1 to 9)

Clause 2(1)

4. Members noted the Administration’s proposal to introduce a CSA to amend the definition of "convention country" to read "specified Paris Convention country" and "specified World Trade Organisation (WTO) member". The Director of Intellectual Property (Acting) (D of IP(Atg)) explained that the Paris Convention, ie the Convention for the Protection of Industrial Property signed in Paris on 20 March 1883, was a very important international agreement on patent protection.

Clause 8

5. In response to Mr SIN Chung-kai’s question, the Administration clarified that all references to the term "the Governor in Council" in existing legislation would be amended in one shot under the adaptation of law programme.

Part II - Applications for standard patents (clauses 10 to 30)

Clause 15

6. Members noted the proposed CSAs to subclauses (2)(a) and (2)(c) was agreed at the previous meeting.

Clause 16

7. DS/T&I clarified that the proposed CSAs were for clarity purpose. The Administration would propose further amendments to this clause in the light of PCT developments.

Part III - Provisions as to applications for standard patents before grant (clauses 31 to 37)

Clause 37

8. Mr SIN Chung-kai and Mrs Selina CHOW were concerned about the availability of appeal channels if an applicant felt aggrieved by the decision of the Registrar of Patents to refuse to record a designated patent application under section 20(1) or to register a designated patent under section 27. In response, D of IP(Atg) and AD of IP said that before the Registrar exercised any refusal power vested in him by the Bill or by the rules, he had to give the affected party an opportunity to be heard as provided under clause 134. Even after such an adverse decision had been made, the applicant could still lodge an appeal to the court against it under clause 129, which was a direct provision for appeal. Since the Registrar’s decision was an administrative act, it would be subject to judicial review. Under both the present and proposed systems, there was no such set-up as an appeal board because the Administration preferred to keep the system as simple as possible.

Part IV - Provisions as to patents after grant (clauses 38 to 49)

Clause 49

9. In reply to members’ questions, DS/T&I and AD of IP said that clause 129 was a general provision for appeal which applied across the board unless specified otherwise. Patentees aggrieved by the Registrar’s decision to revoke their patents on the grounds of public order or morality could therefore lodge an appeal to the court. Clause 49(2)(b) provided the Registrar with an option for handling questions of patentability referred to him. The Registrar might refer such questions to the High court for determination. In such a case, if the patentee was aggrieved by the High court’s decision, he could appeal to the Court of Appeal in accordance with the normal judicial procedures.

Part V - Property in patents and applications; registration (clauses 50 to 56)

Clause 51

10. Members noted the Administration’s proposed CSA to subclause (1) to substitute "under" with "for the purpose of". Mr SIN Chung-kai recalled that the Finance Committee had approved funding for the installation of a computer system to operate and manage the new patent registration system. He questioned whether the register of patents in computer form would have legal effect. In response, AD of IP explained that since the register needed not be kept in documentary form as provided under subclause (4), the Registrar could made use of computer technology. Other intellectual property ordinances had a similar provision.

Part VI - Employees’ inventions (clauses 57 to 61)

11. Members noted this Part.

Part VII - Contracts as to patented products, etc. (clauses 62 to 63)

12. Members noted this Part.

Part VIII - Compulsory licenses for standard patents (clauses 64 to 67)

13. Members noted this Part.

Part IX - Government use of patented inventions (clauses 68 to 72)

14. Members noted this Part.

Part X - Effects of patent and patent application (clauses 73 to 79)

Clause 73

15. DS/T&I explained the proposed CSA to subclause (1) to incorporate the wording of section 60 of the UK Patents Act 1977 (Patents Act) regarding the meaning of infringement. As regards the proposed deletion of subclause (2) concerning "products in transit", the Chairman said that the Bills Committee had yet to decide on the issue. Miss Margaret NG opined that once this subclause was deleted, patent owners would have to rely heavily on the common law to seek protection for patented products in transit. She sought clarification from the Administration on the current application of the common law in this area.

16. In response, D of IP(Atg) said that the Administration could not find any local court case regarding infringement of patented goods in transit. Mattel v. Tonka was the only court case in Hong Kong relating to copyright. In that case, the court interpreted products in transit as imported goods. This case was widely cited in the world. There was difficulty in finding similar cases in other parts of the world because few places were important transit centres like Hong Kong.

17. Both Miss Margaret NG and Mr Ronald ARCULLI queried the authority of the Mattel v. Tonka case which was tried in the High Court and was not binding on other courts. Mr ARCULLI expressed reservations about the proposed deletion. Members agreed to consider subclause (2) later.

Clause 74

18. DS/T&I explained the proposed CSA to subclause (2) to incorporate the wording of section 60 of the Patents Act regarding the meaning of infringement.

Clause 75

19. Mr SIN Chung-kai queried the reasons for imposing limitations of rights of patents. In response, the Principal Assistant Secretary for Trade and Industry and D of IP(Atg) explained that in recognition of trans-boundary movement of vessels, aircraft, hovercraft and land vehicles, there was a practical need to exercise flexibility to exclude them from the rights conferred by a patent. The proposed amendments to subclauses (d) and (e) were consequential to those to the definition of "convention country" aiming at clarifying the nationality of the mode of transport that could be benefited from the provision. They assured members that the exclusion specified in clause 75 was a common practice around the world and would not apply to the mode of transport used within Hong Kong.

20. The next meeting was scheduled for 24 March 1997 at 10:30 am to continue with a clause-by-clause examination of the Bill.

21. The meeting ended at 3:30pm.

Legislative Council Secretariat
3 April 1997

Last Updated on 16 December 1998