PLC Paper No. CB(1)209
(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 Friday, 18 April 1997, at 10:30 am
in Conference Room B of the Legislative Council Building

Members present :

    Hon Ambrose LAU Hon-chuen, JP (Chairman)
    Hon CHAN Kam-lam
    Hon Margaret NG
    Hon SIN Chung-kai

Members absent :

    Hon Mrs Selina CHOW, OBE, JP
    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

Public officers attending :

Mr Augustine CHENG
Deputy Secretary for Trade and Industry
Mr Stephen SELBY
Director of Intellectual Property
Director of Intellectual Property
Mr Patrick NIP
Principal Assistant Secretary for Trade and Industry
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 Confirmation of minutes of meeting

(LegCo Paper No. CB(1)1186 and 1297/96-97)

The minutes of the meetings held on 11 and 24 March 1997 were confirmed.

II Matter arising from previous meeting

(LegCo Paper No. CB(1)1304/96-97)

The Assistant Director of Intellectual Property briefed members on the Administration’s response to concerns raised at the meeting on 24 March 1997 (LegCo Paper No. CB(1)1304/96-97). In reply to a member’s question concerning para 3(a), he explained that the "computer system for improving ship recognition by creating a digital silhouette of an unknown ship" was non-patentable because although the process of comparing the digital silhouette on the computer screen with a ship out at sea was done by electronic means, the process of reaching a decision that the ship was a particular type of ship was nonetheless a mental act.

The Deputy Secretary for Trade and Industry (DS/T&I) then briefed members on the table showing the Administration’s proposed changes to short-term patents (Annex E to LegCo Paper No. CB(1)1304/96-97). Members noted that in formulating the proposals, the Administration had taken into account the views of members, the two legal professional bodies and the Hong Kong Institute of Trade Mark Practitioners. In reply to members’ questions regarding the table, representatives of the Administration supplemented the following information -

  1. the submission of a search report would be a condition for grant of a short-term patent; and
  2. despite streamlined judicial procedures, it would take a few months to complete a speedy trial.

Miss Margaret NG expressed disappointment at the Administration’s decision to retain interlocutory injunction as a remedy against infringement of short-term patents. In her view, as the proposed short-term patent would be granted without examination and a search report would only be required before grant under the Administration’s revised proposal, the risk of abuse was high. The provision under clause 128 for a legislative directive to the court to order speedy trial could not allay her concern as many products had a short commercial life and the harm brought by an interlocutory injunction could be insurmountable. This was particularly the case as past experiences suggested that interlocutory injunctions were easily granted and small businesses could ill afford to defend against allegations of infringement in court. Miss NG also opined that unless a very detailed search report was required before grant, the Administration should stick to the original proposal to require a search report at the point of application.

In response, the Deputy Director of Intellectual Property (DD of IP) emphasised the need to retain the remedy of interlocutory injunction for short-term patents as follows -

  1. The court should have the discretion to decide whether injunctions should be granted. The considerations for granting interlocutory injunctions had been clearly set out in the leading case American Cyanamid Company v. Ethicon Limited (1975) AC.396 (the Case). The case highlighted that the court should weigh the plaintiff’s need for protection against the corresponding need of the defendant and determine where the "balance of convenience" lay. Any abuse or unfairness inherent in the award of an injunction would thus be limited; and
  2. The whole purpose of introducing short-term patents was to provide a quick and effective means of protection for inventors. The perceived abuse of interlocutory injunctions on the basis of their easy obtainment should not be a ground for removing injunctive relief for short-term patent owners. Moreover, interlocutory injunctive relief was available for all sorts of intellectual property. Such a remedy should not be denied to owners of short-term patents.

Since the Administration had agreed to examine and respond to Miss Margaret NG’s proposal to prohibit applications for an interlocutory injunction in respect of short-term patents, members agreed to further discuss the issue at the following meeting.

DD of IP then explained the procedural difficulties in requiring the submission of a search report at the point of application. As a search report had to be prepared by an authorised searching authority under the Patent Co-operation Treaty (PCT) outside Hong Kong, it would be a better arrangement for inventors to file an application for a short-term patent with the Hong Kong Patent Office first and then apply for a search report through the Hong Kong Office. The specifications of a search report for short-term patents would be specified in the rules. At Miss Margaret NG’s request, the Administration would provide information on the specifications as soon as practicable.


III Clause-by-clause examination of the Bill

(LegCo Paper No. CB(1)1105/96-97)

Members continued with a clause-by-clause examination of the Bill.

Part XV - Short-term patents (clauses 108 to 128)

Clause 110

Members noted the Administration’s proposed Committee stage amendments (CSAs) to clause 110 as set out in LegCo Paper No. CB(1)1105/96-97. In reply to a member’s question, DS/T&I explained that the CSA to clause 110(4) to substitute "convention country" with "Paris Convention country or WTO member country, territory or area" was necessary as some convention countries might not be WTO member countries, for example, China.

Clause 113

Members noted that as there was no particular reason for limiting the number of claims to five, the Administration proposed to remove the ceiling on subsidiary claims in accordance with international practice to facilitate processing of short-term patent applications based on international applications. A CSA would be made to clause 113(1)(b)(ii) to achieve this effect.

In reply to a member’s question, the Director of Intellectual Property reported that the Chinese translation of "search report" was based on China’s translation of PCT, to which China was a signatory.

Clause 119

Members noted the Administration’s proposed CSA to this clause.

Part XIX - Repeals and transitional arrangements (clause 153 to Schedule 2)

Clause 156

Members noted the Administration’s proposed CSA to this clause.

Clause 157

Members noted the Administration’s proposed CSA to clause 157(3)(g) and a new subclause 157(4) to empower the Registrar to modify any main rules in order to give effect to the transitional arrangements. They also noted that to allow China to fulfil her obligations under the PCT to facilitate international applications, the Bill would be amended to ensure acceptance of applications for a short-term patent in Hong Kong where there had been a PCT application designating China for utility model protection. Although the specifications and degree of inventiveness for utility models in China differed from those required of short-term patents in Hong Kong, the international applicant should meet all requirements in the Patents Ordinance before the Registrar would grant him a short-term patent under Hong Kong’s law. The Administration further reported that discussions with the Chinese side regarding the necessary amendments were underway. The amendments under consideration were technical and procedural in nature, and would not affect the priority rights and the scope or style of protection. The only change would be that PCT applications designating UK would not be handled in Hong Kong as PCT applications in future. As agreed, the Administration would inform the Bills Committee of the required amendments as soon as practicable.


Clause 158

Members noted the Administration’s proposed CSAs to this clause.

Schedule 1

Members noted the Administration’s proposed CSAs to Schedule 1. In reply to a member’s question, DD of IP confirmed that the Chinese translation of "acceded to" was correct and proper.


At members’ request, the Assistant Legal Advisor agreed to advise the Bills Committee as to whether the proposed CSAs were in order at the following meeting.


The Principal Assistant Secretary for Trade and Industry informed members that the Administration might propose additional textual and technical amendments at the following meeting.


The next meeting was scheduled for 7 May 1997 at 8:30 am to consider outstanding issues and updated CSAs to be provided by the Administration. At members’ request, the Secretariat would prepare a summary of views on patent protection for goods in transit (clause 73(2)) to facilitate deliberations of the Bills Committee.

The meeting ended at 12:00 noon.

Provisional Legislative Secretariat Council
8 September 1997

Last Updated on 16 December 1998