********************************************************
Following is the full text of the speech (English only) by the Assistant Director of Intellectual Property, Mrs Teresa Grant, at the Mainland-Hong Kong Special Administrative Region Intellectual Property Symposium 2000 in Beijing today (April 12):
"What's New on Patent and Registerd Design Protection"
------------------------------------------------------
What's new?
-----------
Three unrelated developments affecting patents and registered designs in Hong Kong, China qualify as 'new' and may interest the intellectual property and business sectors. The developments are the Intellectual Property Department's programme for outsourcing certain non-core activities to the private sector; developments affecting the claims in patents for software; and in claiming priority from Hong Kong applications when filing an application to protect the same subject matter in China Mainland.
Introduction to outsourcing - computer systems for patents and designs registries
----------------------------------------------------------
The introduction of new law for the protection of patents and registered designs in Hong Kong, China in 1997 has contributed to a steady increase in applications for registration of patents and registered designs, despite the relatively small patenting and designing base in Hong Kong. But it is the significant increase in applications for trade mark registration that makes necessary a new computer system for trademarks and, because of economies of scale, makes possible the building of a computer system for design registration and enhancements to the patents computer system.
The rapidly changing business environment worldwide has increased public expectation in Hong Kong that the Intellectual Property Department needs to improve its services. To meet public expectation, the Department needs to rely on private sector expertise in developing and managing computer systems, in providing technological innovation, efficient electronic-based operations and an electronic publication service.
Outsourcing proposal
--------------------
The Intellectual Property Department, with the support of the Secretary for Trade and Industry, proposes to outsource three non-core activities to the private sector -
- information management and processing of existing computer systems for intellectual property registrations and office management
- development and administration of new information technology systems, and
- office operations, including physical and electronic receipt of applications and public search, and the provision of clerical support for the trade marks, patents, and designs registries.
Increasing efficiency in delivery of services
---------------------------------------------
At present the designs registry uses stand-alone desktop computers without networking features. The capacity of the database is small and its operation requires considerable manual efforts to overcome its limitations. In the absence of integration features the preparation of standard documents such as register entries, certificates, letters and reminders to applicants and the compilation of statistics have to be performed separately which is time consuming. The desktop computers are not connected to support a comprehensive designs database with the result that public search has to be conducted on paper records. The process is inefficient and there is growing expectation from agents and the public to automate the entire process.
The existing patents registration information technology system (a newly developed computer registration system for patents implemented in mid-1997) the registry local area network management system, the computerised file management system and the interactive voice processing system are managed by our staff. Although these systems are being operated smoothly, we see the advantage of drawing on outside expertise to enhance the effectiveness and efficiency of the management and maintenance of these systems. We anticipate that the advantage will become more significant as economies of scale can be achieved when the management and maintenance services of the systems are procured from one service provider.
The trade marks computer system has reached its capacity in processing and storage and urgently needs replacing. It is also unable to support many of the requirements of the proposed new trade marks law, for example multi-class applications, merger and splitting of applications.
The law requires applicants for registration of patents, designs and trade marks to advertise the details of an application before registration. This allows those who may be affected by the registration to object, or to take action to protect their rights. Trade marks and designs advertisements require considerable use of graphics and it would be an advantage to advertise details such as colour. At present, the advertisements are published in the Government Gazette. The advertisements are in black and white, and to minimise the cost to applicants only one view of design articles is published. These arrangements are inadequate by international standards. With the present technology, and the popularity and accessibility of Internet websites, effective colour publication of applications, at reasonable cost to applicants, can be achieved through electronic publishing on the Internet.
At present, over-the-counter is the only mode of operation available for many of the Intellectual Property Department's non-core services offered to the public. These include receipt of applications, supply of forms and printed guides, collection of payment and public search. With the rapid development of electronic commerce, many intellectual property authorities worldwide, such as those in Japan, Korea and the United States, have been delivering similar services through electronic means, as an option. The electronic delivery of intellectual property services facilitates the conduct of business and is the norm in various developed economies. To keep pace with the global environment and to meet the expectation of intellectual property agents and the public, there is a pressing need for enhancement in this area.
Benefits of outsourcing
-----------------------
The management of the existing computer systems is an area of work more appropriate to private sector business. The service provider should be able to draw on his experience in the management and maintenance of computer systems to deliver more cost-effective and efficient computer services. The service provider's expertise in information technology will also help us to compensate for some of the limitations inherent in our existing computer systems and to provide remedial measures to address some of the problems of the existing systems, before new systems are developed. The service provider will provide centralised management and maintenance services to the existing computer systems and as a result, we expect that there should be significant synergies to be developed.
Through outsourcing we aim to capture the latest developments in information technology by engaging a service provider in the private sector to provide a package of enhanced services to the public in the most cost-effective manner. Instead of investing substantially in fixed assets and staff training and time to develop the systems in-house, we can spare resources by taking advantage of readily available know-how from the private sector. With one service provider responsible for providing the various types of services, the services will be better coordinated and will be of higher quality. The new services and additional benefits we expect the new information technology systems will provide are -
- on-line real time Internet search of applications and registrations
- worldwide Internet access to Hong Kong's computer database of trade marks, patents and designs registration
- electronic applications for registration
- payment of fees through electronic means
- phasing out of the costly paper-based publication of applications in the Government Gazette (in 1999 applicants for registration paid $66.9 million for advertising in the Gazette)
- lower cost electronic publication with free public access
- colour advertising, and
- quality images of technical drawings and illustrations.
By transferring some of our office functions to the service provider, we will be able to improve the effectiveness and efficiency of our office operations, even before the new computer systems are in place. We think it is appropriate to transfer the receipt of applications for registration, collection of payments, answering public enquiries, distribution of information booklets and provision of public search facilities. With the ability to deploy resources flexibly and by employing a business-originated approach to the outsourced operation, the service provider will be in a better position to enhance our services to the public at a lower cost. For instance, the service provider can provide additional information counters at different convenient locations so that the public do not have to visit our office for the service. The service provider can also develop additional value-added services which we cannot develop owing to our role as registrar of trade marks, patents and designs, for example, the provision of computer trade mark or patent search services to the public.
Approach to outsourcing
-----------------------
In May 1999 we issued a public invitation to private sector service providers for expressions of interest in providing the services to be outsourced. An assessment of the responses from potential bidders indicates that we should offer an initial contract of five years with a phased payment feature to ensure the attractiveness of the project to potential service providers. With the benefit of experience gained after implementation, we may, from 2005-06 onwards, finance the outsourced services on an on-going basis. On completion or termination of the contract, should further outsourcing options not be available, all the systems developed under the service contract, including software, data, and related assets will revert to us at no cost. A transition plan will form part of the contract to ensure a smooth transition at the end of the contract.
Cost and benefit
----------------
We estimate the non-recurrent expenditure on the project will be approximately HK$122.6 million over five years. If we were to develop the trade marks and designs computer systems in-house, we estimate this would cost about HK$110 million over the five-year period. In addition, outsourcing will realise savings of HK$10.4 million in annual staff costs and HK$0.7 million in annual maintenance costs.
Outsourcing programme
---------------------
We propose to go forward on the following programme -
- Invitation for tender April 2000
- Tender submissions April to May 2000
- Assessment of tender submissions June to July 2000
- Award of tender August 2000
- Phase I completion January 2001
- Phase II completion March 2001
- Phase III completion January 2002
Patenting software
------------------
Recent developments in the practice of the European Patent Office, affecting the claims in patents for software, has consequences on the scope of the software patent owner's rights against infringements under the patents law in Hong Kong, China.
Under Hong Kong's patents law, a computer program alone is not patentable (Patents Ordinance section 93(2)). To be patentable an invention must be more than just a computer program. It must be a computer-related invention that produces a further technical effect when the program is run on its computer.
What is meant by producing a further technical effect can be illustrated by the decision in Vicom Systems Inc's Application (T208/84) [1987] OJ EPO 14, 2 EPOR 74, where the invention was for a method of digitally processing images and an apparatus for carrying out the method. The further technical effect in Vicom's invention was the way in which the enhanced image was produced.
If the software produces a technical result it is in principle patentable. But patentability depends also on whether the software is new and has an inventive step. If the software only automates a process which was formerly done mentally or manually, it is not patentable. By contrast, if the software solves a technical problem it is patentable.
The consequence of the developments in European Patent Office practice (and UK Patent Office practice) on claims, is the effect on the patent owner's rights against infringement (IBM's Applications T935/97 [1999] EPOR 301, and T1173/97, Technical Board of Appeal, EPO). Because the patent claims can now be to the computer program itself, or to the program recorded on a carrier (if the 'further technical effect' condition is met) the result is that distributing a disk carrying a counterfeit program is a direct infringement of the patent, not merely a contributory or indirect infringement.
Priority from Hong Kong applications
------------------------------------
Applicants for short-term patent and registered design protection in Hong Kong, China can now claim priority when filing an application to protect the same subject matter in Mainland China. The State Intellectual Property Office's order takes effect from December 1, 1999. It allows patent applicants in China Mainland to claim priority within twelve months of first filing in Hong Kong, China and allows designs applicants to claim priority within six months of first filing in Hong Kong, China.
The formalities of the priority claim are satisfied by making a written declaration when the patent, or designs, application is filed in the State Intellectual Property Office and by filing, within three months, a certified copy of the application first filed in Hong Kong, China.
An applicant's written declaration should state the filing date and filing number of the application from which priority is claimed and that the Intellectual Property Department of Hong Kong, China is the competent authority in respect of that application. The State Intellectual Property Office's order has been publicised in a circular issued by the Intellectual Property Department, Hong Kong (Circular 1 of 2000). The circular explains how certified copies to support the priority claim can be obtained from the Patents Registry and the Designs Registry in Hong Kong, China.
End/Wednesday, April 12, 2000
NNNN