PLC Paper No. CB(1)211
(These minutes have been
Ref: CB1/BC/54 seen by the Administration
and cleared with the Chairman)
Bills Committee on Patents Bill
Minutes of meeting
held on Monday, 12 May 1997, at 12:30 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 CHAN Kam-lam
Hon Margaret NG
Members absent :
Hon NGAI Shiu-kit, OBE, JP
Hon Ronald ARCULLI, OBE, JP
Dr Hon HUANG Chen-ya, MBE
Hon Paul CHENG Ming-fun
Dr Hon LAW Cheung-kwok
Hon SIN Chung-kai
Public officers attending :
- Mr Augustine CHENG
- Deputy Secretary for Trade and Industry
- Mr Stephen SELBY
- Director of Intellectual Property
- Mr Peter CHEUNG
- Deputy Director of Intellectual Property
- Mr Jonathan ABBOTT
- Senior Assistant Law Draftsman
- Miss Elizabeth TSE
- Principal Assistant Secretary for Trade and Industry
- Mr Ray PERERA
- Assistant Director of Intellectual Property
- Mr M K CHU
- 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 Discussion on availability of interlocutory injunctions for short-term patents
(LegCo Paper No. CB(1)1557/96-97)
The Deputy Secretary for Trade and Industry (DS/T&I) referred members to the letter from the Chairman of the Committee on Intellectual Property of the Law Society of Hong Kong (the letter), which expressed support for retention of interlocutory injunctions for short-term patents. He reiterated the reasons for retaining this remedy.
Miss Margaret NG expressed regrets over the Law Societys position. In her view, the Law Society had not taken into consideration the rights of all parties involved nor formulated balanced views on the issue. Nevertheless, she was relieved to note paragraph 5 of the letter that the Law Society recognised the possibility of abuse. To guard against possible abuse, she urged the Administration to take the following measures -
- to issue practice directions with regard to the grant of interlocutory injunctions for short-term patents;
- to give sufficient briefing to the Judiciary on vulnerability of interlocutory injunctions to abuse; and
- to strengthen the rules to the principal ordinance against possible abuse.
Reiterating her reservations regarding retention of interlocutory injunctions for short-term patents and introduction of short-term patents, Miss NG requested the Administration to review the short-term patent system after its operation for a certain period of time, in particular the successful rate of applications for interlocutory injunctions. DS/T&I noted Miss NGs views. He agreed that the Secretary for Trade and Industry would address the members concern at the resumed debate. The Administration also undertook to report the results of the review to the Panel on Trade and Industry in due course.
In reply to a members question on the successful rate of applications for discharge of interlocutory injunctions, the Deputy Director of Intellectual Property said that there had been successful cases where the orders were challenged on the grounds of questionable patent ownership. Miss NG opined that such cases were rare. Instead of going to the court to apply for a discharge, which could be costly, the affected party would normally resort to settlement out of court.
After considering all the views expressed, the Bills Committee agreed that without interlocutory injunctive relief, short-term patents would be unenforceable; its retention was therefore necessary.
II Any other business
Miss Margaret NG queried the Law Societys claim that the proposed removal of the courts power to grant the equitable relief of interlocutory injunctions in respect of short-term patents might contravene the Basic Law. The Assistant Legal Advisor (ALA) was requested to advise on this point.
In response, ALA said that she also doubted the Law Societys claim. Members agreed that the Secretariat should write a letter to the Law Society to clarify this point and circulate the reply to members.
(Post-meeting note: The reply was circulated to members vide LegCo Paper No. CB(1)1628/96-97.)
Members agreed that ALA would scrutinize the Chinese version of the proposed Committee stage amendments (LegCo Paper No. CB(1)1531/96-97) and draw to their attention of any irregularity.
Members expressed appreciation of the Administrations efforts in providing clear and detailed information to the Bills Committee in the course of deliberations.
The meeting ended at 1:00 pm.
Provisional Legislative Council Secretariat
1 September 1997
Last Updated on 16 December 1998