The Assistant Director of Intellectual Property briefed members on the Administrations response to concerns raised at the meeting on 24 March 1997 (LegCo Paper No. CB(1)1304/96-97). In reply to a members 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 Administrations 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 -

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

Miss Margaret NG expressed disappointment at the Administrations 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 Administrations 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 -

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 plaintiffs 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
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 NGs 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 NGs request, the Administration would provide information on the specifications as soon as practicable.

Admin

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 Administrations proposed Committee stage amendments (CSAs) to clause 110 as set out in LegCo Paper No. CB(1)1105/96-97. In reply to a members 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 members question, the Director of Intellectual Property reported that the Chinese translation of "search report" was based on Chinas translation of PCT, to which China was a signatory.

Clause 119

Members noted the Administrations proposed CSA to this clause.

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

Clause 156

Members noted the Administrations proposed CSA to this clause.

Clause 157

Members noted the Administrations 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 Kongs 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.

Admin

Clause 158

Members noted the Administrations proposed CSAs to this clause.

Schedule 1

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

Admin

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.

ALA

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

Clerk

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

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

I Confirmation of minutes of meeting

II Matter arising from previous meeting

III Clause-by-clause examination of the Bill

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

Clause 110

Clause 113

Clause 119

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

Clause 156

Clause 157

Clause 158

Schedule 1

Minutes of meeting
held on Friday, 18 April 1997, at 10:30 am
in Conference Room B of the Legislative Council Building