LegCo Paper No. CB(1)1297/96-97
(These minutes have been seen by
Bills Committee on Patents Bill
Minutes of meeting
held on Monday, 24 March 1997, at 10:30 am
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 Margaret NG
Hon SIN Chung-kai
Members absent : Hon NGAI Shiu-kit, OBE, JP
Hon Ronald ARCULLI, 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 L S CHENG
Deputy Secretary for Trade and Industry
Mr Peter CHEUNG
Director of Intellectual Property (Atg)
Mr Patrick NIP
Principal Assistant Secretary for Trade and Industry
Mr Ray Perera
Assistant Director of Intellectual Property
Mr Ben LEUNG
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 Confirmation of minutes of meeting
(LegCo Paper No. CB(1)1117/96-97)
The minutes of the meeting held on 24 February 1997 were confirmed.
II Clause-by-clause examination of the Bill
Members continued with a clause-by-clause examination of the Bill.
Part XI - Infringement (clauses 80 to 90)
The Assistant Director of Intellectual Property (AD of IP) advised that in response to proposals from the Hong Kong Bar Association (the Bar), a Committee stage amendment (CSA) would be introduced to replace subclauses (1) and (2) with sections 63(1) and (2) of the UK Patents Act 1977 (Patents Act). The amendment was only a change in wording for clarity without affecting the substance of the subclauses.
In response to a members question, representatives of the Administration explained that the word "relief" as used in subclause (1) referred to a patentees legal right to initiate proceedings against infringement notwithstanding the fact that his patent was only partially valid.
Part XII - Revocation of patents (clauses 91 to 101)
Responding to a members question, the Director of Intellectual Property (Acting) (D of IP(Atg)) advised that in determining the principles of the Bill, the Administration had referred to the Patents Act enacted in 1977. The drafting of the Bill followed closely the latest version of the Act.
In reply to members questions, the Deputy Secretary for Trade and Industry (DS/T&I) and D of IP (Atg) explained that patent protection mainly covered inventions for products and processes. The excluded items listed in subclauses (2) to (6) were in line with the Paris Convention. These were excluded either because they should be publicly owned and should not be monopolised, or because there were other laws dedicated to their protection. For example, "a program for a computer" would be protected under the copyright law as literary works and "a plant or animal variety" under the Plant Varieties Protection Ordinance (Ordinance No. 21 of 1996) enacted in May 1996. To illustrate the meaning of "a method for performing a mental act" as used in subclause (2)(c), representatives of the Administration agreed to provide written examples.
DS/T&I advised that the Administration would move CSAs to subclauses (2)(a) and (3)(a) to make their meaning clearer.
In reply to a members question, DS/T&I confirmed that patent rights were estates that could be succeeded.
Part XIII - General provisions as to amendment of patents and patent applications (clauses 102 to 103)
Members noted this Part.
Part XIV - Language of proceedings; authentic text (clauses 104 to 107)
Members noted this Part.
Part XV - Short-term patents (clauses 108 to 128)
(LegCo Paper No. CB(1)1105/96-97)
D of IP(Atg) briefed members on Annex A to the Administrations information paper on a comparison table of the present Australian petty patent system, the proposed Australian innovation patent system and the proposed Hong Kong short-term patent system. Members discussed each of the features described in the table.
Members noted that the present Australian petty patents would be renamed as innovation patents to highlight the idea of innovation. The change in name was also aimed at discarding the connotation that the invention was minor.
D of IP (Atg) advised that because of limited applications, the Australian Government proposed to lower the inventive level to attract more applications. The proposal was also considered to be conducive to the Australian local creative industries.
Number of claims
D of IP (Atg) explained that claims essentially defined the extent of monopoly for patents. They spelled out in concrete terms what the invention was all about. Under clause 113(1)(b)(ii), an applicant could apply for one or more claims but not exceeding one independent claim and four subsidiary claims in respect of a short-term patent. At members request, the Administration would clarify the need to differentiate between an independent claim and a subsidiary claim which was different from the Australian system.
D of IP (Atg) explained that under the proposed innovation patent system, the term would be increased from six to eight years. The Administration would meet with the Law Society of Hong Kong, the Bar and the Hong Kong Institute of Trade Mark Practitioners on 26 March 1997 at which the term of short-term patents would be discussed.
Prior art base
In response to a members question, D of IP (Atg) explained that under the present and the proposed systems in Australia, petty patents were granted on the prior art base of domestic publication and use only. However, as each country had its own requirements for registration of patents, the Australian arrangement should not have any effect on patent protection in other countries unless these countries had an agreement with Australia for mutual recognition and protection of patents.
D of IP (Atg) explained that under the proposed innovation patent system, a two-tier examination system would be put in place, ie formality check plus substantive examination. Instead of having a substantive examination at the time of application, this would be conducted until before infringement proceedings but in any case no later than three years from the date of filing. The Australian Government estimated that a formality check would be completed within three months from the date of filing and the patent in question would then be registered. During the period between registration and a substantive examination, the patentee would enjoy legal recognition of his priority right to the patent, which arose from the date of filing.
Miss Margaret NG opined that the risk of abuse would increase in the absence of a substantive examination, in particular if interlocutory injunctions were readily available. In response, representatives of the Administration explained that regardless of whether a substantive examination had been conducted, it would always rest with the court to determine the validity of a patent in infringement proceedings.
Miss Margaret NG and Mr SIN Chung-kai further pointed out that notwithstanding the lower inventive level in the proposed Australian innovation patent system, a substantive examination remained necessary before initiation of infringement proceedings. The local requirement for a search report at the point of application for a short-term patent was thus very reasonable and should be the minimum requirement. Moreover, as the inventive level of the Australian innovation patents was lower than Hong Kongs short-term patents, it might not be appropriate for Hong Kong to model entirely on the Australian system. The Administration noted the two members views. DS/T & I added that the Administration would discuss the subject with the professional bodies.
At members request, the Administration would explore the reasons for the Australian proposal to defer a substantive examination to a later stage and advise whether an increase in litigation was expected. In this connection, the Administration would make reference to overseas experience and advise whether there had been many litigation cases in places which did not impose a requirement for a substantive examination before grant of a patent.
Members noted that under the proposed innovation patent system, publication of information relating to the patent would be released three months from the date of filing. DS/T & I said that taking into account the time required for a formality check and the preparation of a search report, it would take an applicant about six months to register a short-term patent in Hong Kong. Since priority rights would arise from the date of filing, the Administration would consider whether to follow the Australian system to advance publication of the information at the filing stage.
D of IP (Atg) advised that under the existing and the proposed Australian systems, a provisional application for a petty patent could be filed on submission of the basic information. In such a case, a formal application would only be processed after all the required information was available. An applicant could, however, choose to file a formal application without submitting a provisional application.
Convertibility and dual protection
AD of IP explained that an applicant could apply for a standard patent and a petty patent for the same invention. However, to prevent abuse, the Australian Government proposed that an innovation patent granted could not be converted to a standard patent. The Bill contained no provisions regarding convertibility and dual protection. However, by virtue of clause 91(1)(h)(i) which stated that a person could have a standard patent and a short-term patent for the same invention unless the two patents were not under the proprietorship of the same person, dual protection was possible. The Administration would discuss the subject with the professional bodies.
Members agreed to defer discussion on Part XV pending the Administrations discussion with the professional bodies.
Part XVI - Miscellaneous (clauses 129 to 139)
Members noted this Part.
Part XVII - Offences (clauses 140 to 144)
Miss Margaret NG opined that this Part would need to be amended should any amendments be made to Part XV. Representatives of the Administration noted the members view and said that corresponding amendments would be made where necessary. The Administration undertook to advise whether the penal provisions in this Part were in line with the existing legislation on the protection of intellectual property and the reasons for discrepancy, if any.
Part XVIII - Administrative provisions (clauses 145 to 152)
D of IP (Atg) confirmed that similar provisions were incorporated in all intellectual property protection laws and in the Patents Act.
Miss Margaret NG pointed out the incongruity between the subtitle and the content of the clause. In response, the Administration agreed to review the drafting of the subtitle. In reply to her questions, AD of IP confirmed that the Governments right to sell forfeited articles would be based on court orders. This provision was modelled on the Patents Act.
Part XIX - Repeals and transitional arrangements (clauses 153 to 158)
DS/T&I advised that a CSA would be introduced to amend subclause (2) to clarify that the relevant sections would not apply to the 1949 Act patents. At members request, the Administration undertook to provide an explanation for the proposed CSA.
DS/T&I advised that a CSA would be introduced to subclause (3)(g) to clarify entries in the register. The Administration also proposed to add a new subclause (4) to empower the Registrar to modify any main Rules in order to give effect to the transitional arrangements. The Administration would provide information on the rules to be made under this clause for members consideration.
The next meeting was scheduled for 18 April 1997 at 10:30 am. to continue scrutiny of the Bill from clause 156 onwards.
The meeting ended at 12:30 pm.
Legislative Council Secretariat
15 April 1997