Legislative Texts
PATENTS (GENERAL) RULES
Chapter 514C
Empowering section
�
(Cap 514 section 149)
[27 June 1997] (L.N. 367 of 1997)
(L.N. 339 of 1997)
PART I
�PRELIMINARY
�
Section 1
�(Omitted as spent)
�
(Omitted as spent)
Section 2
�Interpretation
� - (1)
- In these Rules, unless the context otherwise requires
“application number” means
- (a) �
- in relation to an application for a designated patent or a patent granted in pursuance of such an application, the number assigned by the designated patent office upon the filing of that application;
- (b) �
- in relation to an application for a patent under the Ordinance or a patent granted in pursuance of such an application, the number assigned by Registrar upon the filing of that application;
“Chinese Patent Office” means the office established under the laws of the People’s Republic of China for the granting of patents for inventions;
“European Patent Office” means the office of that name of the European Patent Organization established by the Convention on the Grant of European Patents done at Munich on 5 October 1973;
“International Patent Classification” means the system of common classification for patents for inventions provided for under the Agreement concerning the International Patent Classification done at Strasbourg on 24 March 1971;
“publication number” means
(a) �in relation to a document published under the Ordinance, the number assigned to the document by the Registrar upon its publication;
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(b) �in relation to a document published under the laws of a patent office outside Hong Kong or under any international convention, the number assigned to the document upon its publication by that patent office or under that convention;
“send” includes give;
“United Kingdom Patent Office” means the office established under the laws of the United Kingdom for the granting of patents for inventions. - (2)
- In these Rules
- (a) �
- reference to something being filed at a place or with a person is to be construed as reference to
- (i) �
- its being sent to that place or person;
- (ii) �
- its being made or left at that place or given or made to or left with that person; or
(iii) �that person being furnished with it;
- (b) �
- reference to the filing of anything without an indication of the place at which or person with whom it is to be filed is to be construed as reference to its being filed with or sent or delivered to the Registrar at the registry;
- (c) �
- reference to a document in any proceedings before the Registrar being in the specified form is to be construed as a reference to the document being in such form, if any, as may be specified by the Registrar under section 150 of the Ordinance in connection with those proceedings.
PART II
�APPLICATIONS FOR STANDARD PATENTS
�
Section 3
�References to the Registrar under section 13(1)(a) of the Ordinance
�
Right to apply - (1)
- A reference to the Registrar under section 13(1)(a) of the Ordinance shall
- (a) �
- be in the specified form and be filed in duplicate;
- (b) �
- be accompanied by a statement in duplicate setting out fully the nature of the question being referred, the facts upon which the person making the reference relies and the order or other relief sought; and
- (c) �
- be accompanied by the prescribed fee.
- (2)
- The Registrar shall send a copy of the reference and statement
- (a) �
- to any person (other than the person referred to in subsection (1) ) alleged in the reference to be entitled to apply for a standard patent for the invention; and
- (b) �
- in addition, where an application has been made for a standard patent for the invention, to
(i) �any person, not being a party to the reference, who is shown in the register as having a right in or under the application for a standard patent;
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(ii) �where the application for the standard patent has not been published, any person (not being a party to the reference) who is an applicant for the standard patent or has given notice to the Registrar under section 46 of a transaction, instrument or event in relation to the application; and
(iii) �every person who has been identified in the application for the standard patent as believed to be the inventor or joint inventor of the invention. - (3)
- Any person who is sent a copy of the reference and statement under subsection (2) and who wishes to oppose the making of the order or the granting of the relief sought (“the opponent”) shall, within 3 months from the date on which the copies are sent to him, file a counter-statement setting out fully the grounds of his opposition.
- (4)
- (a) The counter-statement shall be in the specified form, shall be filed in duplicate and shall be accompanied by the prescribed fee.
(b) �The Registrar shall send a copy of the counter-statement to the person making the reference and to those recipients of the copy of the reference and statement who are not party to the counter-statement.
- (5)
- The person making the reference or any recipient of a copy of the counter-statement may, within 3 months from the date on which the copy of the counter-statement is sent to him, file evidence in support of his case and shall send a copy of the evidence so filed to
- (a) �
- the opponent; and
- (b) �
- in addition, in the case of evidence filed by such a recipient, the person making the reference.
- (6)
- Within 3 months from the date on which the copy of such evidence is sent to him or, if no such evidence is filed, within 3 months from the expiry of the time within which it might have been filed, the opponent may file evidence in support of his case and shall send a copy of the evidence so filed to the person making the reference and those recipients.
- (7)
- Within 3 months from the date on which the copy of the opponent’s evidence is sent to him, that person or any of those recipients may file further evidence confined to matters strictly in reply and shall send a copy of it to the persons mentioned in subsection (5)(a) and (b) .
(8) No further evidence shall be filed except by leave or direction of the Registrar.
- (9)
- The Registrar may give such directions as he may think fit with regard to the subsequent procedure.
Section 4 References by joint proprietors under section 13(1)(b) of the Ordinance - (1)
- A reference to the Registrar under section 13(1)(b) of the Ordinance shall
- (a) �
- be in the specified form and be filed in duplicate;
- (b) �
- be accompanied by a statement in duplicate setting out fully the nature of the question being referred, the facts relied upon by the joint proprietor making the reference and the order sought; and
- (c) �
- be accompanied by the prescribed fee.
- (2)
- The Registrar shall send a copy of the reference and statement-
Legislative Texts - (a) �
- to each joint proprietor who is not a party to the reference and who has not otherwise indicated his consent to the making of the order sought; and
- (b) �
- in addition, in a case where an application has been made for a standard patent for the invention, to
- (i) �
- any person to whom it is alleged in the reference any right in or under any application for a standard patent should be transferred or granted;
- (ii) �
- any person, not being a party to the reference, who is shown in the register as having a right in or under the application for a standard patent;
(iii) �where the application for a patent has not been published, any person (not being a party to the reference) who has given notice to the Registrar under section 46 of a relevant transaction, instrument or event; and
(iv) �every person who has been identified in the application for a standard patent as believed to be the inventor or joint inventor of the invention. - (3)
- Any person who receives a copy of the reference and statement and who wishes to oppose the making of the order sought shall, within 3 months from the date on which the copies are sent to him, file a counter-statement setting out fully the grounds of his opposition.
- (4)
- (a) The counter-statement shall be in the specified form, shall be filed in duplicate and shall be accompanied by the prescribed fee.
(b) �The Registrar shall, as appropriate, send a copy of any counter-statement to each joint proprietor who is a party to the reference and to any person to whom a copy of the reference and statement were sent pursuant to subsection (2) .
- (5)
- Any person who receives a copy of the counter-statement may, within 3 months from the date on which the copies are sent to him, file evidence in support of his case and shall send a copy of the evidence so filed to the joint proprietor making the reference and to each person who has filed a counter-statement.
- (6)
- Any person entitled to receive a copy of the evidence filed under subsection (5) may, within 3 months from the date on which the copy is sent to him or, if no such evidence is filed, within 3 months from the expiry of the time within which it might have been filed, file evidence in support of his case and shall send the copy of the evidence so filed to each of the other parties mentioned in sub section (4)(b) .
- (7)
- Any person who receives a copy of the evidence filed under subsection (6) may, within 3 months from the date on which the copy is sent to him, file further evidence confined to matters strictly in reply and shall, as appropriate, send a copy of the evidence so filed to the parties mentioned in subsection (4)(b) .
(8) No further evidence shall be filed except by leave or direction of the Registrar.
- (9)
- The Registrar may give such directions as he may think fit with regard to the subsequent procedure.
Section 5
�Orders under section 13 of the Ordinance
�
(1) Where an order is made as is mentioned in section 14(2) of the Ordinance, the Registrar shall notify all original applicants and their licensees of whom he is aware of the making of the order.
Legislative Texts - (2)
- A request under section 14(3) of the Ordinance shall be made
- (a) �
- in the case of a request by the original applicant or any of the original applicants, within 2 months from the date on which a notification is sent to him under subsection (1) ; or
- (b) �
- in the case of a request by a licensee, within 4 months from the date on which a notification is sent to him under subsection (1).
Section 6
�Authorization under section 13(5) of the Ordinance
� - (1)
- An application under subsection (5) of section 13 of the Ordinance for authority to do anything on behalf of a person to whom directions have been given under subsection (3)(c) or (4) of that section shall
- (a) �
- be in the specified form and be filed in duplicate;
- (b) �
- be accompanied by a statement in duplicate setting out fully the facts upon which the applicant relies and the nature of the authorization sought; and
- (c) �
- be accompanied by the prescribed fee.
- (2)
- The Registrar shall send a copy of the application and statement to the person alleged to have failed to comply with the directions.
- (3)
- The Registrar may give such directions as he may think fit with regard to the subsequent procedure.
Section 7
�Reference to the Registrar under section 14(5) of the Ordinance
� - (1)
- Where, following the making of an order as is mentioned in subsection (2) of section 14 of the Ordinance, a question is referred to the Registrar under subsection (5) of that section as to whether any person is entitled to be granted a licence or whether the period or terms of a licence are reasonable, the reference shall
- (a) �
- be in the specified form and be filed in duplicate;
- (b) �
- be accompanied by a statement in duplicate setting out fully the facts upon which the person making the reference relies and the period and terms of the licence which he is prepared to accept or grant; and
- (c) �
- be accompanied by the prescribed fee.
- (2)
- The Registrar shall send a copy of the reference and statement to every person in whose name the application is to proceed or, as the case may be, every person claiming to be entitled to be granted a licence, in either case not being a person who makes the reference.
- (3)
- If any recipient of the reference and statement does not agree to grant or accept the licence for such period and upon such terms as are set out in the statement, he shall, within 3 months from the date on which the copies are sent to him, file a counter-statement setting out fully the grounds of his objection.
- (4)
- (a) The counter-statement shall be in the specified form, shall be filed in duplicate and shall be accompanied by the prescribed fee.
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(b) �The Registrar shall send a copy of the counter-statement to the person making the reference.
(5) The Registrar may give such directions as he may think fit with regard to the subsequent procedure.
Section 8
�Request to record a designated patent application under section 15 of the
�Ordinance
�
Request to record a designated patent application - (1)
- A request to record a designated patent application under section 15 of the Ordinance (or, in the case of a designated patent application that is the national phase of an international application under the Patent Cooperation Treaty, under that section as applied by section 16 of the Ordinance) shall be in the specified form.
- (2)
- Further to section 15(2) of the Ordinance (including that section as applied by section 16 of the Ordinance)
- (a) �
- the documents required under paragraph (a) of that subsection
- (i) �
- shall be filed in duplicate, and one of those duplicate copies shall be in loose leaf form in accordance with section 12o f these Rules;
- (ii) �
- shall be exempted from any requirement under section 104(1) of the Ordinance to be filed in one of the official languages;
- (b) �
- the documents prescribed for the purposes of paragraph (d) of that subsection are those mentioned in section 9 of these Rules;
- (c) �
- the following particulars shall be set out in the request
- (i) �
- the date of filing of the designated patent application;
- (ii) �
- the title of the invention;
(iii) �the application number of the designated patent application; (iv) �the publication number, and date of publication, of the designated patent application;
- (d) �
- if the designated patent application is the national phase of an international application, the following particulars shall be set out on the request
- (i) �
- the application number of the international application;
- (ii) �
- the filing date of the international application;
(iii) �the date of publication of the international application by the International Bureau and its publication number; - (iv) �
- the date of publication of the international application in the designated patent office indicating that the application has validly entered its national phase;
- (v) �
- in the case of an international application designating the Chinese Patent Office as published by the International Bureau in the Chinese language, the date of the issuance of the National Application Notification by the Chinese Patent Office;
Legislative Texts - (e) �
- in the case of a request to record a divisional designated patent application as provided for in section 22 of the Ordinance or a request to record in a new application made pursuant to an order under section 55(4) of the Ordinance, the following particulars in relation to the earlier application for a standard patent shall be set out in the request to record
- (i) �
- the application number of the earlier application;
- (ii) �
- the filing date of the earlier application;
(iii) �the date of publication of the request to record of the earlier application;
- (f) �
- the request shall contain such translations of documents and transliteration of names as may be required under section 56o f these Rules;
- (g) �
- the request shall contain a list of the documents comprising the request to record and an indication of the number of sheets of each such document.
Section 9 Documents supporting statement of derivation of entitlement to apply
For the purposes of section 15(2)(d) of the Ordinance, the following documents are prescribed in relation to an applicant’s statement explaining his entitlement to apply for the grant of a patent - (a) �
- where the statement under that section indicates that the applicant for a standard patent is the successor in title to the person named in the designated patent application as applicant
- (i) �
- certified copies of such documents as establish the transfer, assignment or mortgage of the rights under the designated patent application in Hong Kong from that person to the applicant for a standard patent; or
- (ii) �
- in the absence of any such document in relation to a particular transfer, assignment or mortgage, a statement signed by the transferor, assignor or mortgagor confirming the fact of the transfer or assignment or mortgage;
- (b) �
- where the statement indicates that the applicant for a standard patent, not being a person specified in paragraph (a), is the inventor of the invention who is entitled to the property in the invention in Hong Kong, such documents as establish that entitlement;
- (c) �
- where the statement indicates that the applicant for a standard patent is the successor in title to the person specified in paragraph (b) , the documents specified in that paragraph and, in addition
- (i) �
- such documents as evidence the transfer or assignment or mortgage (whether by a single such transaction or by a number of such transactions) of the property in the invention in Hong Kong from the inventor of the invention to the applicant;
- (ii) �
- in the absence of any such document in relation to a particular transfer, assignment or mortgage, a statement signed by the transferor, assignor or mortgagor confirming the fact of the transfer, assignment or mortgage.
Section 10
�Details relating to the previous disclosure of the invention
�
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For the purposes of the statement required under section 15(2)(f) of the Ordinance, the following details relating to the previous disclosure of the invention are prescribed - (a) �
- the name and place of the exhibition or meeting referred to in section 55 of these Rules at which the invention was first disclosed;
- (b) �
- the opening date of such exhibition or meeting;
- (c) �
- if the first disclosure of the invention did not take place on the opening date of such exhibition or meeting, the date of such first disclosure.
Section 11
�Period of grace
�
If the filing fee or advertisement fee payable under section 15(4) of the Ordinance has not been paid within the time provided for in that subsection, it may still be validly paid within a period of grace of 1 month after the sending by the Registrar to the applicant of a communication pointing out the failure to observe the time limit if, and only if, within this period an additional prescribed fee is paid.
Section 12
�Size and presentation of documents
� - (1)
- All documents making up a request to record shall be so presented as to permit of
- (a) �
- direct reproduction by photography, photocopying, photo offset and micro-filming, in an unlimited number of copies;
- (b) �
- the scanning of the document by a device capable of capturing an image of the document and converting that image into a form suitable for storing on and retrieval by a computer.
- (2)
- All sheets of the documents making up a request to record shall be free from cracks, creases and folds; and only one side of the sheet shall be used.
- (3)
- All documents shall be on A4 paper (29.7 cm × 21 cm) which shall be pliable, strong, white, smooth, matt and durable.
- (4)
- Each of the documents shall commence on a new sheet; and the sheets shall be connected in such a way that they can easily be turned over, separated and joined together again.
- (5)
- The minimum margins shall be as follows-
Top 2.0 cm
�Left side 2.5 cm
�right side 2.0 cm
�Bottom 2.0 cm
� and the recommended maximum for the margins quoted above is as follows-
Top 4.0 cm
�left side 4.0 cm
�right side 3.0 cm
�Bottom 3.0 cm
�
- (6)
- The margins of each of the documents, when submitted, must be completely blank.
Legislative Texts - (7)
- All the sheets contained in the documents shall be numbered in consecutive Arabic numerals; and such numbering shall be placed at the top of the sheet, in the middle, but not in the top margin.
- (8)
- Every document (other than drawings) shall be typed or printed in a dark, indelible colour in at least 1 1/2 line spacing and in characters of which the capital letters, where appropriate, are not less than 0.21 cm height, except that
- (a) �
- the request to record may be completed in writing; and
- (b) �
- graphic symbols and characters and chemical and mathematical formulae may be written or drawn, in a dark indelible colour.
- (9)
- All documents shall be reasonably free from deletions and other alterations, overwritings and interlineations and shall, in any event, be legible.
- (10)
- The Registrar may exempt any document from compliance with any of the provisions of this section, if the authenticity of the content is not in question and the requirements for good reproduction are not in jeopardy or in such other circumstances as he may think fit.
Section 13
�Form of statements, counter-statements and evidence
�
Any statement, counter-statement or evidence filed shall, unless the Registrar otherwise directs, comply with the requirements of section 12(1) and (3) , except that both sides of the sheet may be used in the case of statutory declarations and evidence.
Section 14
�Issue of receipt by Registrar
�
On first receipt of any of the documents comprising a request to record the Registrar shall - (a) �
- mark the documents with the date of their receipt by him and assign a number to the proceedings; and
- (b) �
- issue to the applicant a receipt which shows the number so assigned, the nature and number of the documents received and the date of their receipt.
Section 15
�Date of publication of the designated patent application based on an
�international application under section 16 of the Ordinance
�
(1) For the purposes of section 15(1) of the Ordinance, and despite section 5(2)(d)(ii) of the Ordinance, the date of publication of the designated patent application based on an international application under section 16 of the Ordinance shall be - (a) �
- in the case of an international application designating the European Patent Office, the date of publication by the European Patent Office in its Bulletin of the relevant bibliographical data showing that the international application has entered the national phase in the European Patent Office;
- (b) �
- in the case of an international application designating the United Kingdom Patent Office, the date of publication by the United Kingdom Patent Office in its Official
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Journal (Patents) of the relevant bibliographical data showing that the international application has entered the national phase in the United Kingdom Patent Office;
(c) �in the case of an international application designating the Chinese Patent Office as published by the International Bureau other than in the Chinese language, the date of publication by the Chinese Patent Office in its Patent Gazette of the relevant bibliographical data showing that the international application has entered the national phase in the Chinese Patent Office.