LegCo Paper No. CB(1)1117/96-97
(These minutes have been
seen by the Administration)
Bills Committee on Patents Bill
Minutes of meeting
held on Monday, 24 February 1997, at 4:30 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 Paul CHENG Ming-fun
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
Dr Hon LAW Cheung-kwok
Public officers attending :
- Mr Augustine L S CHENG
- Deputy Secretary for Trade and Industry
- Mr Peter CHEUNG
- Deputy Director of Intellectual Property (Atg.)
- Mr Patrick NIP
- Principal Assistant Secretary for Trade and Industry
- Mr Ray Perera
- Assistant Director of Intellectual Property
- 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 Nos. CB(1)747 and 917/96-97)
. The minutes of the meetings held on 7 and 23 January 1997 were confirmed.
II Matters arising from previous meetings
(LegCo Paper No. CB(1)889/96-97)
2. Members went through the information paper provided by the Administration.
Clauses 15(2)(a) and 15(2)(c)
3. The Deputy Secretary for Trade and Industry (DS/T&I) and the Principal Assistant Secretary for Trade and Industry (PAS/T&I) reported that in the light of members views and after discussion with the Law Draftsman, the Administration would consider moving Committee stage amendment (CSA) to -
- substitute the words "verified copy" by "photocopy" in clause 15(2)(a); and
- specify the application of the word "applicant" in clause 15(2)(c) to make it clear that only when the applicant for the grant of a standard patent in Hong Kong was not the named applicant in a designated patent application would he be required to provide prescribed documents supporting his right to apply for the grant of a patent.
4. DS/T&I informed members that in addition to section 44 of the UK Patents Act 1977 ( Patents Act) (an equivalent to clause 62), UK had other laws relating to competition. However, whether section 44 was intended to be an integral part of these legislation was unclear. The proposed clause 62 was only intended as a measure against restrictive practices. The Director of Intellectual Property had written to the Law Society of Hong Kong (LS) to seek clarification of its latest views on clause 62 but had yet to receive a reply. At members request, the Administration undertook to report the outcome to the Bills Committee at the next meeting.
Clauses 62(1)(a) and 62(6)
5. DS/T&I and the Assistant Director of Intellectual Property (AD of IP) reported that in response to members queries on the consistency of these two clauses, the Administration had consulted the Law Draftsman who confirmed that they were consistent with each other. The equivalent sections in the Patents Act were sections 44(1)(a) and 44(6). Clause 62(1)(a) provided that any condition or term of a contract for, or relating to, the supply of a patented product should be void in so far as it purported to impose restraints on the acquisition of anything other than the patented product whereas clause 62(6) stated that a term in an agreement which merely forbade a person from selling goods (whether patented or not), other than those supplied by the licenser, was not void under clause 62(6).
6. AD of IP further reported that the Administration had also studied the Chartered Institute of Patent Agents Guide, which covered sections of the Patents Act and was the prime textbook on the subject. The Administration could not find any indication in the Guide which suggested that the two clauses in question were inconsistent. Members expressed difficulty in understanding the differences between these two clauses. The Administration undertook to provide some written examples to explain their differences.
Infringement court cases
7. DS/T&I and AD of IP informed members that Mattel v. Tonka was the only court case in Hong Kong relating to copyright. Other than this, the Administration could not find any local court case regarding infringement of patent in respect of goods in transit.
8. AD of IP clarified the Administrations proposal. For application of short-term patents in Hong Kong , a search report was required from one of the International Searching Authorities as might be appointed by the Assembly of the International Patent Co-operation Union or the designated patent offices under the Bill (i.e., the Patent Offices of Australia, Austria, China, Japan, the Russian Federation, Sweden, the United States of America, the United Kingdom and the European Patent Office). For application of standard patents, a search report was not required because Hong Kong would only register patents granted by any of the three designated patent offices which should have conducted a thorough search before grant.
9. In response to members questions on international practices regarding search reports, representatives of the Administration supplemented that under the Patent Co-operation Treaty (PCT) an applicant might file an international application designating any one or more member countries from which he might wish to pursue a patent application. Since not each and every member country had the expertise and resources to examine the validity of a patent application, Article 16 of the PCT listed the aforementioned authorities as international preliminary examining authorities which were fully equipped to conduct full search and examination. A search report for cited prior art issued by these international preliminary examining authorities would give some indication of the validity of the patent. These search reports were not intended for short-term patents which were unique to Hong Kong. However, by requiring an applicant for the grant of a short-term patent to produce a search report, this would enhance the validity of short-term patents granted in Hong Kong and the credibility of the system.
III Discussion on short-term patents
(LegCo Paper No. CB(1)826/96-97)
10. DS/T&I briefed members on the French and Australian patent systems described in the Administrations paper.
The Australian petty patent system
11. In reply to members questions, representatives of the Administration reported that the Australian Intellectual Property Organisation (AIPO) had published the results of its review on the petty patent system and notified the Hong Kong Government on 21 February 1997 of its intention to amend the system in the light of the findings. In gist, the review revealed that the number of applications for petty patents, totalling a few hundreds a year, was much smaller than that for standard patents, which ranged from a few thousands (local applications) to over 20,000 (international applications designating Australia). This indicated that the system might not be serving its purpose. AIPO was therefore considering the need to lower the standard of novelty and patentability to make the system more suited to the needs of individuals and small and medium businesses. It might also rename its petty patent system as innovation patent system and extend the term from six years to eight years. AIPO was still working out the specific details of the proposed changes. The Administration would closely monitor developments and send an official to Australia in early March 1997 to obtain more information on the future direction of the Australian system. At members request, the Administration agreed to provide a comparison of the present Australian petty patent system and the proposed new system upon finalization by AIPO.
12. In this connection, Mrs Selina CHOW emphasised that the Administration should learn from the Australian experience and examine the Australian proposals from the perspective of how best to establish a user-friendly short-term patent system for Hong Kong, in particular the requirement for a search report.
13. Miss Margaret NG highlighted the concern of the Hong Kong Bar Association (the Bar) about the risk of abuse against third-party use inherent in the proposed non-examination short-term patent system in Hong Kong, and pointed out that the potential abuse would be particularly serious if summary judgment and interlocutory injunction applications were too readily available. In her view, small businesses would be the main victims since they could not afford to defend against allegations of infringement in court. The provision under clause 128 for a legislative directive to the court to order speedy trial instead of granting an interlocutory injunction was an unsatisfactory arrangement as many products had a short commercial life and the harm brought by an interlocutory injunction could be insurmountable. Miss NG emphasised that unless the Administration had very sound reasons for retaining the right to institute interlocutory actions in respect of short-term patent, she would object to clause 128. She requested the Administration to ascertain whether interlocutory injunction was available in the present and the proposed Australian system and to advise the number of litigation cases involving pretty patents in Australia and France in the past few years as soon as practicable. The Administration noted Miss NGs views and agreed to consider these further.
The French utility certificate and patent system
14. DS/T&I drew members attention to the differences between the French utility certificate system and the proposed Hong Kong short-term patent system. Members noted that the French utility certificates were intended to protect inventions considered lesser than patents. Under the French system, the standard of novelty was lower and an application for a utility certificate could not be converted into a patent application.
15. Miss Margaret NG was concerned about safeguards against abuse in the French system given that utility certificates had the same rights, same conditions of patentability and infringement as patents notwithstanding that neither search examination nor novelty search report was required except when an infringement action was brought. She also enquired whether the French system provided for interlocutory injunction, and if so, the mechanism in place to counterbalance that right. DS/T&I undertook to clarify with the French authority as to the actions required in initiating infringement proceedings and the exact point of time at which a novelty search report was required for utility certificates. He, however, emphasised that the proposed short-term patent system for Hong Kong was mainly based on recommendations in the Patents Steering Committee Report. While the Australian system might be used as a blueprint, both the Australian and the French systems were for reference only and it was important to consider the local conditions.
IV Discussion on the checklist of major concerns raised by consultees
(LegCo Paper No. CB(1)611/96-97)
16. Members continued with discussions on the checklist of major concerns raised by consultees provided by the Administration.
Restoration of rights - clause 29
17. DS/T&I pointed out that clauses 15 and 24(2) were not inconsistent with clause 29 as claimed by LS in its earlier submission to the Administration because clauses 15 and 24(2) both dealt with the filing of an application for the first time whereas clause 29 referred to the procedures for restoration of rights. He and PAS/T&I further pointed out that LS had not followed up on this point in its subsequent submission to the Administration after the Bill was gazetted. It could be assumed that LS was satisfied with the Administrations explanation.
Revocation/amendment in designated patent office - clauses 43 and 44
18. As regards earlier comments made by LS and the Hong Kong Institute of Trade Mark Practitioners (HKITMP) that patents granted in Hong Kong were dependent on the designated patent offices after grant, DS/T&I and AD of IP said that the Administration noted this point but considered that this would have the advantage of providing a cheaper alternative route. As a patent granted in Hong Kong was based on the registration of a corresponding patent granted by any of the designated patent offices, it was logical for amendments made to the latter patent following opposition or revocation proceedings in the designated patent office to be made also to the Hong Kong patent. They added that LS and HKITMP had made no further comments on this point and that clause 43 had already incorporated the Bars suggestion to require amendments to be filed within a specified period. The Administration would specify in the Rules to require patentees to file amendments with the Registrar within three months.
V The way forward
19. Members discussed the way forward in scrutinising the Bill. They agreed to examine the Bill clause-by-clause notwithstanding its length, and to consider the provisions for standard patents at the next meeting. Pending the Administrations provision of information on changes to the Australian petty patent system, the Bills Committee would discuss short-term patents again.
20. The next meeting was scheduled for 11 March 1997 at 2:30 pm. To facilitate discussions, the Administration agreed to provide a table comparing the existing and the proposed patent legislation in respect of standard patents.
21. The meeting ended at 6:00 pm.
Legislative Council Secretariat
19 March 1997
Last Updated on 16 December 1998