For discussion FCR(96-97)49
on 19 July 1996
ITEM FOR FINANCE COMMITTEE
CAPITAL WORKS RESERVE FUND
HEAD 710 - COMPUTERISATION
Intellectual Property Department
New Subhead "Computerisation of the Patent Registration System"
HEAD 78 - INTELLECTUAL PROPERTY DEPARTMENT
Subhead 001 Salaries
Members are invited to approve the proposals in FCR(96-97)23 (attached).
2. At the Finance Committee meeting on 21 June 1996, Members asked the Administration to consider whether the proposal to computerise the patent registration system should proceed before enactment of the Patents Bill. In particular, Members were concerned about the risk of incurring nugatory expenditure.
3. This note provides supplementary information for Members' consideration.
4. Hong Kong currently maintains a Register of Patents. The Hong Kong Patent Registry manually records on the register details of patents granted by the United Kingdom Patent Office (UKPO). Protection in Hong Kong is not automatic: the patent owner must make an application to the Hong Kong Patent Registry to record such patents. After registration in Hong Kong, such patents remain in force so long as they are in force in the United Kingdom (UK). We estimate that about 20 000 patents registered in Hong Kong in this way are still in force in the UK.
5. We introduced the Patents Bill into the Legislative Council on
10 July 1996. We believe that a local patent registration system needs to be in place in Hong Kong on 1 July 1997 because -
- Hong Kong has an obligation to provide by law for the protection of patents under international intellectual property treaties (the Paris Convention, which the UK has applied to Hong Kong, and China has agreed to apply to Hong Kong from 1 July 1997), and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) under the World Trade Organisation;
- Article 139 of the Basic Law authorises the Hong Kong Special Administrative Region Government to protect patents by law on its own; and
- owners of patents on the Hong Kong register now enjoy legal rights under the existing Patents Ordinance; as we cannot continue to rely on the backing of the patents granted in the UK we will need to have our own patent system.
6. However, this is not to imply that Members of the Legislative Council have to pass the Patents Bill put before it : only that we will have to provide a legal basis, preferably the legal and administrative systems we propose, by 1 July 1997 -
- to continue to protect the legal rights of existing patent owners; and
- to allow Hong Kong to continue, on its own, to provide protection to new patents, as required under existing international treaty obligations and provided for under the Basic Law.
7. The core procedural requirements of patent systems worldwide are -
- to receive patent applications, process these applications and register or grant patents for inventions;
- to keep an accurate and up-to-date register containing details of patents and patent applications, including the name and address of the proprietor or applicant, the title of the invention and other bibliographic data related to the patent;
- to maintain such a register after the grant of a patent by recording changes in details of the proprietor, status of the patent, etc.; and
- to make the register and patent documents available for inspection by the public.
The existing patent system in Hong Kong has covered the majority of the above core requirements. We expect to continue to feature them all in any future system.
8. In respect of patent documentation in particular, the documents filed under the existing and the proposed patent system in Hong Kong follow a standard format worldwide. For instance, the method and format of issuing patent documentation on grant and of publishing under the new system are based on guidelines recommended by the World Intellectual Property Organisation (WIPO). In line with international practice and to provide for continuity we expect the major requirements for patent documentation on filing under any future system to remain substantially the same.
9. We propose to implement the new patent system to be set up under the new Patents Ordinance, if enacted, through a computer system having regard to the following factors -
- The need to continue to provide the core procedural requirements
In order that we can provide the core procedural and documentation requirements we need the support of the computer system to speed up processing time and allow for proper management control. In respect of patent documentation in paragraph 8 above, since we are to design the computer system in such a way as to facilitate the storage and easy access to patent documentation in an electronic form, the support it will give in the storage and production of such documentation for public inspection will remain basically the same even if we make changes to the required documentation.
- Receiving data transferred from the UK
In order that we can have a local record of which UK patents currently registered in Hong Kong are still in force and to allow for independent protection in Hong Kong, we are making arrangements with the UKPO to transfer their records of such patents to Hong Kong before 1 July 1997. We shall need computer capacity to receive this data.
- Providing an improved search facility and service to the public
It is a basic concept of all patent systems that in return for being granted patent rights, inventors have an obligation to make the invention readily available to the public. So all patent systems incorporate a requirement to make the register and patent documentation available for inspection. At present, the public in Hong Kong has access to information on patents protected in Hong Kong, but only on a paper-based manual system. The proposed computer system will greatly enhance the Patent Registry's services to the public by making patent information available in a matter of a minute or so, rather than a minimum of half-hour as is required under the present system. Moreover, in the computer system, two or more people (including the public and Intellectual Property Department staff) can look at the same data at the same time. This is not possible under the manual system.
10. We appreciate that Members will be keen, as we are, to avoid the risk of incurring nugatory expenditure. However, we believe we can justify exceptional treatment in this case. We will need to fulfil the obligations on Hong Kong -
- to continue to protect existing patents;
- to continue to process applications for new patents;
- to continue to maintain a register of accurate and up-to-date information on patents protected in Hong Kong; and
- to carry out this work and make relevant information available to the public in a timely and convenient manner,
under the international treaties applying to Hong Kong independent of the proposed Patents Bill. If Members approve the computer system, we will use it to support the operation and management of Hong Kong's patent system, in whatever form it takes. We will make sure that in developing the computer system, we will accommodate amendments, if any, to the Bill affecting the set-up and running of that system.
11. We therefore believe that the fundamental justification for the proposals in FCR(96-97)23 exists independently of the passage of specific contents of the Patents Bill. Having regard to the lead time required for setting up the computer system, we recommend that Members approve this item now so that we can set up and run the computer system upon the establishment of a new patent system under the new Patents Ordinance.
Trade and Industry Branch
Last Updated on 2 December 1998