Enforcement of Short-term Patent Rights

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There are two types of patent granted in Hong Kong, namely, standard patent and short-term patent.  As a supplement to standard patent, short-term patent can be directly filed in Hong Kong and is granted under the Patents Ordinance (Cap.514) to offer protection for inventions with a shorter commercial life cycle.   Since no substantive examination is required before granting of short-term patent, the validity of a short-term patent is often challenged when the owner tries to enforce it.

Short-term Patent Application An application for grant of short-term patent has to be filed with the Patents Registry of the Intellectual Property Department (“Registry”).  It is governed by section 113 of the Patents Ordinance (“PO”). Basically, the applicant is required to file a request for grant on Patents Form P6, a specification and an abstract in both English and Chinese together with a search report prepared either by one of the designated patent offices, namely, the State Intellectual Property Office of the People’s Republic of China, the European Patent Office and the United Kingdom Patent Office, or by any “International Searching Authority” appointed pursuant to Article 16 of the Patent Cooperation Treaty. A person who has filed (1) an application for a patent or other protection in respect of an invention in a WTO member country or Paris Convention country or (2) an application for a short-term patent in respect of an invention in Hong Kong (“Previous Application”) shall enjoy, for the purpose of filing a subsequent application for a short-term patent in respect of the same invention, a right of priority for the period of 12 months after the date of filing of the first application.[1] The effect of the priority right is to synchronize the date of the subsequent short-term patent application with that of the Previous Application for the purpose of determining the novelty and inventive step of the patent. [2] The Registrar of Patents (“Registrar”) will examine the application to ensure that it meets the “minimum requirements” and the “formal requirements”.[3] In essence, the examination in respect of a short-term patent is only a formality examination. No substantive search and examination of the novelty or inventiveness of the invention will be conducted. Section 117 of the PO provides that the Registrar is under no obligation to consider or to have regard to any question as to the patentability of the invention.  As stated by Recorder Yuen, SC in Environmental Systems Product Holdings Inc. v DPC Technology Ltd. [2010] HKCU 839: “by reason of section 117 of the PO, the granting of a short-term patent per se does not mean that the invention claimed in the relevant short-term patent is patentable invention in that it is, among others, new and involves an inventive step. If a new invention is neither obvious nor foreseeable by a person skilled in the related technology after looking at the current state of the arts in that field, then that new invention can be seen as possessing inventive step.”[4] The short-term patent application system is, to some extent, an “honour” system because it depends heavily on the integrity and honesty of an applicant in that an applicant would not make any application in respect of a claimed invention known to be not patentable for whatever reasons. Rights conferred by a Short-term Patent Once granted, a short-term patent is initially valid for four years from the date of filing. The maximum term of protection of a short-term patent is eight years (subject to renewal for the second four years before the expiry of the first four years). [5] A short-term patent while it is in force confers on the owner the right to prevent all third parties not having his consent from using the invention. For example, if the subject-matter of the short-term patent is a product, the owner of a short-term patent has a right to prevent all third parties not having his consent from making, putting on the market, using or importing the product in Hong Kong.[6]knows, or it is obvious in the circumstances to a reasonable person, that the said means are suitable and intended for putting that invention into effect in Hong Kong.[7]  A short-term patent also confers on the owner the right to prevent any unauthorized indirect use of the subject-matter of the short-term patent. For example, the owner of a short-term patent has a right to prevent all third parties from supplying or offering to supply in Hong Kong a person, other than a party entitled to work the patented invention, with means, relating to an essential element of that invention, for putting it into effect, when the third party However, it should be noted that pursuant to section 75 of the PO there is also limitation on the effect of a short-term patent. For example, the rights conferred by a short-term patent shall not extend to acts done privately for non-commercial purposes or acts done for experimental purposes relating to the subject-matter of the relevant patented invention. [8] Enforcement of Short-term Patent The owner of a short-term patent (i.e. the owner or the exclusive licensee) can bring civil proceedings against infringements committed after the grant of the short-term patent. This is because if an application for grant of a short-term patent has been filed but has not yet been granted, the applicant has no enforceable right in relation to the short-term patent. When the owner commences legal action, it is for the owner of the patent to establish its validity, and the fact the patent has been granted shall be of no account in that regard. This is because granted short-term patent has not gone through substantive examination and its validity has not been examined and tested. Even if the search report submitted with the application for short-term patent has indicated that the invention has novelty and inventiveness, it is not conclusive, as such search report may not be thorough and may have failed to search and identify pertinent prior arts. Therefore, it is advisable to seek advice from solicitors or patent attorneys and conduct a thorough search on the novelty and inventiveness of the short-term patent before commencing any action, especially in view of the challenges and/or defences (as discussed below) that might be raised by the defendant. Challenges on Validity and Revocation In most cases, besides raising the defence that its product does not infringe the short-term patent, the defendant will usually challenge the validity of the short-term patent arguing that the invention lacks novelty or inventive steps. The defendant will try to establish that the invention is not new by showing that before the filing date (or priority date) of the short-term patent, the invention claimed in the short-term patent was already part of the state of the art available to the public, i.e. there are prior arts which disclose and anticipate the invention of the short-term patent. For example, if an application for grant of the same invention has been filed in the People’s Republic of China earlier, but no priority (of the earlier PRC patent application) has been claimed when filing the application for grant of the short-term patent in Hong Kong subsequently, then the invention in the later HK short-term patent (even if it is by the same inventor) will not be regarded as new. Accordingly, the short-term patent will be held invalid and revoked by the Hong Kong court. Application for an order to revoke a short-term patent can be made to the court by any person.  The defendant in a patent infringement action can also seek to revoke the short-term patent by way of counterclaim in the action. Conclusion

In order to enforce the rights conferred by the short-term patent, the owner shall first establish the validity of the short-term patent as the grant itself is not a conclusive evidence that the short-term patent is patentable which the party being sued usually challenges. If the owner failed to prove the validity or the party being sued proved that the short-term patent is invalid, the short-term patent will be revoked and the infringement claim will be dismissed by the court.


[1]       Section 110 of the Patents Ordinance (Cap.514) [2]       Section 112 of the Patents Ordinance (Cap.514) [3]       Under section 114(1), the Registrar shall examine the application to see if it satisfies the requirements specified in section 114(2) for the accordance of a date of filing (i.e. the minimum requirements). Under section 115(1), if a short-term patent application has been accorded a date of filing, the Registrar shall examine whether the requirements of section 113 and of any rules made for the purpose of that section (i.e. the formal requirements) have been satisfied, such as whether a request for the grant of a short-term patent has been filed, and whether a specification, an abstract and a search report have been filed. [4]       Environmental Systems Product Holdings Inc. v DPC Technology Ltd. [2010] HKCU 839, para 16 [5]       Section 126 of the Patents Ordinance (Cap.514) [6]       Section 73 of the Patents Ordinance (Cap.514) [7]       Section 74 of the Patents Ordinance (Cap.514) [8]       Section 75 of the Patents Ordinance (Cap.514)
 
IMPORTANT:
The law and procedure on this subject are very specialized and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
 
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Published by ONC Lawyers © 2013