**************************
Following is a question by the Hon Emily Lau and a written reply by the Secretary for Constitutional Affairs, Mr Stephen Lam (in the absence of the Secretary for Commerce, Industry and Technology), in the Legislative Council today (April 25):
Question:
Recently, I received a complaint from a member of the public alleging that the patent registration system of Hong Kong fails to provide sufficient protection for the intellectual property rights of inventors. If small and medium enterprises (SMEs) discover acts of infringement involving their inventions, they can only resort to costly civil proceedings. In this connection, will the Executive Authorities inform this Council:
(a) of the respective numbers of applications for registration of patents received and approved in each of the past three years by the Patents Registry under the Intellectual Property Department;
(b) whether they know the difficulties faced by SMEs in applying for registration of patents in Hong Kong;
(c) whether they will consider criminalising acts of infringement involving patents registered in Hong Kong; and
(d) of the number of civil cases involving acts of infringement of patents registered in Hong Kong in the past three years, and the number of such cases in which the courts ruled in favour of the plaintiffs?
Reply:
Madam President,
(a) The Patents Ordinance (Cap.514) provides for two types of patents in Hong Kong: standard patents and short-term patents. The grant of a standard patent in Hong Kong is based on a patent granted by one of three designated patent offices, namely, the State Intellectual Property Office of the People's Republic of China, the United Kingdom Patent Office and the European Patent Office (applicable to applications for patent in the United Kingdom only). An applicant may lodge an application in Hong Kong after the publication of his patent application in one of these designated patent offices. According to the Patents Ordinance, the Hong Kong Patents Registry only conducts formality examination of applications for standard patent. That is, the documents and information submitted by the applicant are checked to ensure that the requirements for registration are satisfied. It does not conduct substantive examination to assess whether the invention in question is patentable and new, involves an inventive step and is susceptible to industrial application, etc. The application procedure for short-term patents is relatively simple. An applicant may lodge his application with the Patents Registry of Hong Kong direct without having first made an application at a designated patent office. The grant of a short-term patent is based on a search report prepared by one of the International Searching Authorities appointed pursuant to Article 16 of the Patent Cooperation Treaty or by one of the designated patent offices. A standard patent is valid for a maximum term of 20 years. A short-term patent is valid for a maximum term of 8 years.
The number of patent applications and the number of grants in the last 3 years are set out at Annex 1.
The number of grants is much smaller than the number of applications for standard patents. The reason is that some of the patent applications did not survive the substantive examination of the designated patent offices. Furthermore, some applicants may abandon their applications during the application process.
(b) Through our contact with the industry, we understand that some SMEs may not be fully conversant with the protection offered by a patent and the application process; whereas individual SMEs might need financial assistance. In view of the above, the Intellectual Property Department, in close collaboration with the trade and industrial organisations and SME organisations, has from time to time organised talks to explain the legal provisions and application procedures to SMEs. Moreover, the Innovation and Technology Commission has introduced the Patent Application Grant (grant) to assist local companies and individuals in applying for patents to protect their inventions. The grant is administered by the Hong Kong Productivity Council (HKPC). Where an application is approved, a grant of 90% of the sum of the total direct cost of the patent application (including the cost for patent search and technical assessment) plus the administration fee charged by HKPC, or HK$100,000.00, whichever is the lower sum, will be provided. SMEs in need may apply for the grant. In the past three years, the Innovation and Technology Commission approved a total of 244 cases of grant, amounting to $24.4 million. The yearly breakdown is at Annex 2.
(c) Hong Kong is a member of the World Trade Organisation (WTO). The regime for the protection of intellectual property in Hong Kong complies with the standard of the "Agreement on Trade-Related Aspects of Intellectual Property Rights" (TRIPS Agreement) of the WTO. In respect of patents, the TRIPS Agreement does not require acts of patent infringement to be criminalised.
We also note that in patent infringement litigations, the party being alleged of infringement would, more often than not, choose to challenge the validity of the patent(s) concerned and make counter-claims against the plaintiff. The proceedings usually involve disputes over many technical issues. It is not always easy to ascertain whether an invention infringes another person's patent. Criminal law should be clear and unambiguous to ensure that members of the public do not contravene the law inadvertently. There are likely to be enforcement difficulties if patent infringements are criminalised. We have examined the patent legislation of other common law jurisdictions. In general they do not criminalise acts of patent infringement. For the foregoing reasons, we have at this stage no plan to criminalise acts of patent infringement.
(d) Patent infringement litigations are civil actions. As we do not specifically collect statistics on this type of litigations, we do not have the requested figures.
Ends/Wednesday, April 25, 2007
Issued at HKT 14:30
NNNN
