WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects 
of Intellectual Property Rights IP/N/IIHKG/P/31 Add.4 
26 July 2004 
(04-3205) 
Original: English! 
anglaisl 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
HONG KONG, CHINA 
Addendum 
The present document reproduces the textl of the Patents (General) (Amendment) Rules 2004, 
as notified by Hong Kong, China under Article 63.2 of the Agreement (see document 
IPINI1 IHKGIl 0). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETl!: INTELLECTUELLE NOTIFIEES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
HONG KONG, CHINE 
Addendum 
Le present document contient Ie texte1 des Regles de 2004 relatives aux brevets (dispositions 
generales) (modifications), notifiees par Hong Kong, Chine au titre de l'article 63:2 de l'Accord (voir 
Ie document IPINIl/HKGIlO). 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL pARRAFO 2 
DEL ARTiCULO 63 DEL ACUERDO 
HONG KONG, CHINA 
Addendum 
En el presente documento se reproduce el texto1 del Reglamento (modificado) (general) de 
patentes de 2004, que Hong Kong, China ha notificado en virtud del parrafo 2 del articulo 63 del 
Acuerdo (vease el documento IPINIlIHKGIlO). 
I In English only'/En anglais seulement.!En ingIes solamente. IPINIIIHKGIP13/AddA 
PageZ 
L. S. NO.2 TO GAZETTE NO. 11/2004 L.N. 37 of 2004 
L.N. 37 of 2004 
PATENTS (GENERAL) (AMENDMENT) RULES 2004 
CONTENTS 
Section 
1. COIDD1encen1ent .............................................................................................. . 
2. Interpretation ................................................................................................. . 
3. Section added 
2A. Specified forms .............................................................................. . 
4. Sections substituted 
3. References to the Registrar under section 13(1)(a) or (b) of the 
Ordinance .................................................................................. . 
5. Authorization under section 13(5) of the Ordinance ..................................... . 
6. Reference to the Registrar under section 14(5) of the Ordinance ................... . 
7. Request to record a designated patent application under section 15 of the 
Ordinance ................................................................................................... . 
8. Documents supporting statement of derivation of entitlement to apply ........ . 
9. Size and presentation of documents ............................................................... . 
10. Request for registration of designated patent and grant of patent under 
section 23(1) of the Ordinance ................................................................... . 
11. Maintenance of application for standard patent under section 33 of the 
Ordinance ................................................................................................... . 
12. Amendment of standard patent under section 43 of the Ordinance .............. . 
13. Revocation of standard patent under section 44 of the Ordinance ................ . 
14.' Mention of inventor under section 45 of the Ordinance ................................ . 
15. Amendment of specification after grant ......................................................... . 
16. Surrender of patents ....................................................................................... . 
17. Registrar's power to revoke patent on grounds of "ordre public" or morality 
under section 49 of the Ordinance .............................................................. . 
18. Section substituted 
42. Address for service in respect of patents 
42A. Failure to file address for service .................................................. .. 
19. Alteration of name or address ...................................................................... .. 
20. Registration of transactions, etc., in relation to patents and patent 
applications ................................................................................................ . 
21. Correction of errors in patents and applications under section 146 of the 
Ordinance ................................................................................................... . 
22. Request as to payment of renewal fee ............................................................ . 
23. Sections amended ........................................................................................... . B295 Section IPINIIIHKGIP131 AddA 
Page 3 
24. Section substituted 
52. Order or direction by court ........................................................... . 
25. The language of proceedings before the Registrar ......................................... . 
26. Applications for the grant of short-term patents under section 113 of the 
Ordinance ................................................................................................... . 
27. Size and presentation of documents ............................................................... . 
28. Procedure where applicant is not the inventor or sole inventor ..................... . 
29. Rectification of deficiencies in short-term patent applications ...................... . 
30. Claiming priority under section 111 of the Ordinance ................................... . 
31. Agents ............................................................................................................ . 
32. Request for information under section 147 of the Ordinance ........................ . 
33. Restriction on inspection of documents under section 147 of the Ordinance 
34. Bibliographic information for purposes of section 147(3) of the Ordinance .. , 
35. Section substituted 
93. Filing of documents with the Registrar ......................................... . 
93A. Electronic filing ............................................................................ .. 
93B. Terms for electronic filing ............................................................ .. 
93C. Designation of electronic mail box ............................................... .. 
93D. Service of documents .................................................................... .. 
93E. Form in which the records of the registry are kept, etc ............... .. 
36. Alteration of time limits ................................................................................. . 
37. Section added 
100A. Extension of time limits in the case of an interruption in the 
registry's operations .................................................................. .. 
38. Section substituted 
102. Verification of documents ............................................................ .. 
39. Application under section 13(4) of the Transitional Rules ............................ . 
40. Section added 
113. Transitional prOVlSlon relating to the Patents (General) 
(Amendment) Rules 2004 ......................................................... .. 
41. Micro-organisms ........................................................................................... .. 
42. Fees ............................................................................................................... .. IPINIIIHKG/P/31 AddA 
Page 4 
PATENTS (GENERAL) (AMENDMENT) RULES 2004 
(Made under section 149 of the Patents Ordinance (Cap. 514) with 
the consent of the Financial Secretary) 
1. Commencement 
These Rules shall come into operation on the day appointed for the 
commencement of sections 2(d), 12 and 14 of the Intellectual Property 
(Miscellaneous Amendments) Ordinance 2001 (2 of 2001). 
2. Interpretation 
(1) Section 2(1) of the Patents (General) Rules (Cap. 514 sub. leg. C) is 
amended, in the definition of "International Patent Classification", by adding 
", as revised or amended from time to time" after" 1971". 
(2) Section 2(1) is amended, in the definition of "send", by adding ", and 
cognate expressions are to be construed accordingly" after "give". 
(3) Section 2(1) is amended by adding-
" "digital signature" (!tlif;§~::i-) has the meaning assigned by section 2(1) of 
the Electronic Transactions Ordinance (Cap. 553); 
"electronic record" C~Tl.l~~) has the meaning assigned by section 2(1) of 
the Electronic Transactions Ordinance (Cap. 553); 
"electronic signature" (~T1,ifi'-) has the meaning assigned by section 2(1) 
of the Electronic Transactions Ordinance (Cap. 553); 
"information system" (~~Tl* M) has the meaning assigned by section 2(1) 
of the Electronic Transactions Ordinance (Cap. 553);". 
(4) Section 2(2)(a) is repealed. 
(5) Section 2(2)(b) is repealed and the following substituted-
"(b) reference to the filing of a document or other thing with the 
Registrar, or reference to the filing of a document or other thing 
without an indication of the place at which or person with whom 
it is to be filed, shall be construed as a reference to the filing of 
the document or thing with the Registrar in accordance with 
sections 93, 93A, 93B and 93C;". 
3. Section added 
The following is added immediately after section 2-"2A. Specified forms IPINIlIHKGfPI3/AddA 
Page 5 
A requirement to use a specified form is satisfied by the use of 
either-
(a) a replica of the specified form; or 
(b) a form acceptable to the Registrar, 
that contains the information required by the specified form and complies 
with any directions of the Registrar as to the use of the specified form or 
replicas of it.". 
4. Sections substituted 
Sections 3 and 4 are repealed and the following substituted-
"3. References to the Registrar under section 
13(1)(a) or (b) of the Ordinance 
(1) A reference to the Registrar under section 13(1)(a) or (b) of the 
Ordinance shall-
(a) be in the specified form; 
(b) be accompanied by a statement setting out fully the nature 
of the question, the facts upon which the person making the 
reference relies and the order or relief sought; and 
( c) be accompanied by the prescribed fee. 
(2) In the case of a reference under section 13(1)(a) of the 
Ordinance, the person making the reference shall, at the same time as he 
files it, send a copy of the reference and statement to each of the following 
persons (not being a party to the reference)-
(a) each person who is alleged in the reference to be entitled to 
apply for the grant of a standard patent for the invention 
that is the subject of the reference; 
(b) each person whom the person making the reference believes 
to be the inventor or joint inventor of that invention; and 
(c) if an application for a standard patent for that invention 
has been published before the reference is filed, each person 
who is shown in the register as having a right in or under 
that application. 
(3) In the case of a reference under section 13(1)(b) of the 
Ordinance, the person making the reference shall, at the same time as he 
files it, send a copy of the reference and statement-
(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 or the granting of the relief sought; JP/N/l/HKG/P/3/ AddA 
Page 6 
(b) to each of the following persons (not being a party to the 
reference )-
(i) each person to whom it is alleged in the reference any 
right in or under the application should be transferred 
or granted; and 
(ii) each person whom the person making the reference 
believes to be the inventor or joint inventor of the 
invention that is the subject of the reference; and 
(c) if an application for a standard patent for that invention 
has been published before the reference is filed, to each 
person who is shown in the register as having a right in or 
under that application. 
(4) The person making the reference shall attach to each copy of the 
reference and statement he sends under subsection (2) or (3), as the case 
may be, a notice containing the names and addresses of all persons to 
whom a copy of the reference and statement is being sent under that 
subsection, and he shall notify the Registrar of the names and addresses of 
those persons. 
(5) In addition, if an application for a standard patent for the 
invention that is the subject of a reference under section 13(1)(a) or (b) of 
the Ordinance has been filed but the application has not been published 
before the reference is filed, the Registrar shall send a copy of the 
reference and statement to each of the following persons (not being a 
party to the reference or a person to whom copies have been sent under 
subsection (2) or (3), as the case may be)-
(a) each person who is an applicant for the standard patent; and 
(b) each person who has given notice to the Registrar under 
section 46 of a transaction, instrument or event in relation 
to that application. 
(6) The Registrar shall send a notice containing the names and 
addresses of all persons to whom copies of the reference and statement 
have been sent under subsection (5) to-
(a) each person to whom copies have been sent under that 
subsection; 
(b) the person making the reference; and 
(c) each person whose name and address has been notified to 
the Registrar under subsection (4). 
(7) Any person who is sent a copy of the reference and statement 
under subsection (2), (3) or (5) 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 which shall be in the specified form, shall set out fully 
the grounds of opposition and shall be accompanied by the prescribed fee. IPINIl/HKG/P/3/ Add A 
Page 7 
(8) The opponent shall, at the same time as he files the counter­
statement, send a copy of it to each of the following persons (not being a 
party to the counter-statement)-
(a) the person making the reference; 
(b) each person whose name and address has been notified to 
him under subsection (4); and 
(c) each person whose name and address has been notified to 
him under subsection (6). 
(9) The person making the reference and any other person to whom 
a copy of the counter-statement is sent under subsection (8) may, within 
3 months from the date on which it is sent to him, file evidence in support 
of his case and, if he files such evidence, he shall send a copy of it-
(a) to the opponent; and 
(b) where the evidence is filed by such other person, to the 
person making the reference. 
(10) Within 3 months from the date on which a copy of evidence is 
sent to the opponent under subsection (9) or, if no such evidence is filed 
under that subsection, within 3 months from the expiry of the time within 
which evidence might have been filed, the opponent may file evidence in 
support of his case and, if he files such evidence, he shall send a copy of it 
to-
(a) the person making the reference; and 
(b) any other person who has filed the evidence under 
subsection (9). 
(11) The person making the reference and any other person to whom 
a copy of the opponent's evidence is sent under subsection (10) may, 
within 3 months from the date on which the copy is sent to him, file 
further evidence confined to matters strictly in reply to the opponent's 
evidence and, if he files such further evidence, he shall send a copy of it-
(a) to the opponent; and 
(b) where the further evidence is filed by such other person, to 
the person making the reference. 
(12) No further evidence shall be filed except by leave or direction of 
the Registrar. 
(13) The Registrar may give such directions as he may think fit with 
regard to the subsequent procedure.". 
5. Authorization under section 13(5) of the 
Ordinance 
(1) Section 6( 1)( a) is amended by repealing "and be filed in duplicate". 
(2) Section 6(1 )(b) is amended by repealing "in duplicate". IP/N/lfHKG/P/3/ Add A 
Page 8 
(3) Section 6(2) is amended by repealing "The Registrar shall" and 
substituting "The applicant shall, at the same time as he files the application,". 
6. Reference to the Registrar under section 
14(5) of the Ordinance 
(1) Section 7(1)(a) is amended by repealing "and be filed in duplicate". 
(2) Section 7(1)(b) is amended by repealing "in duplicate". 
(3) Section 7(2) is amended by repealing "The Registrar shall" and 
substituting "The person making the reference shall, at the same time as he 
files the reference,". 
(4) Section 7(4)(a) is amended by repealing ", shall be filed in duplicate". 
(5) Section 7(4)(b) is amended by repealing "The Registrar shall send a 
copy of the counter-statement" and substituting "The recipient shall, at the 
same time as he files the counter-statement, send a copy of it". 
7. Request to record a designated patent 
application under section 15 of the 
Ordinance 
Section 8(2)(a)(i) is amended by repealing "in duplicate, and one of those 
duplicate copies shall be in loose leaf form". 
8. Documents supporting statement of 
derivation of entitlement to apply 
Section 9(a)(i) is amended by repealing "certified". 
9. Size and presentation of documents 
(1) Section 12(1)(a) is amended­
(a) by repealing "direct"; 
(b) by adding "and" at the end. 
(2) Section 12(5) and (6) is repealed. 
(3) Section 12(7) is amended by repealing "; and such numbering shall be 
placed at the top of the sheet, in the middle, but not in the top margin". 
(4) Section 12(8) is repealed. 10. Request for registration of designated patent 
and grant of patent under section 23(1) of 
the Ordinance IPINI1/HKG/P/3/ AddA 
Page 9 
Section 19(2)(a) is amended by repealing "loose leaf form" and 
su bsti tuting " accordance with section 12 of these Rules". 
11. Maintenance of application for standard 
patent under section 33 of the Ordinance 
(1) Section 28(1) is amended by repealing "and be signed by the 
applicant" . 
(2) Section 28(3) is amended by adding "1;!H!~)(14B'9" after "f.lC~$B'9". 
12. Amendment of standard patent under 
section 43 of the Ordinance 
(1) Section 35(1) is amended by repealing "3 months" and substituting "6 
months". 
(2) Section 35(2) is repealed and the following substituted-
"(2) A filing of documents with the Registrar for the purposes of 
section 43(1) of the Ordinance shall be made by filing-
(a) a verified copy of-
(i) the amended specification; or 
(ii) the amending order; 
(b) a notice of the amendment in the specified form; and 
(c) such translations of the documents filed under paragraph 
(a) as may be required under section 56 of these Rules.". 
13. Revocation of standard patent under section 
44 of the Ordinance 
(1) Section 37(2)(a) is amended by repealing "and be filed in duplicate". 
(2) Section 37(4) is repealed and the following substituted-
"(4) A person who files an application under section 44(4) of the 
Ordinance shall, at the same time, send a copy of the application and any 
evidence and translation accompanying the application to every person 
registered as proprietor of the patent and to every other person who is 
shown in the register as having a right in or under the patent.". 
(3) Section 37(5) is amended by repealing "in duplicate". 
(4) Section 3 7 (6) is amended by repealing "The Registrar shall send a 
copy of the counter-statement" and substituting "The recipient shall, at the 
same time as he files the counter-statement, send a copy of it". IPIN/1/HKG/P/3/ AddA 
Page 10 
14. Mention of inventor under section 45 of the 
Ordinance 
(1) Section 38(2)(b) is amended by repealing "in duplicate". 
(2) Section 38(3) is repealed and the following substituted-
"(3) A person who files an application under subsection (1) or a 
request under section 45(2) of the Ordinance shall, at the same time, send 
a copy of the application or request and any statement accompanying it 
to-
(a) every person registered as proprietor of the patent other 
than the applicant or person making the request; 
(b) every person who has been identified in the patent as the 
inventor or a joint inventor of the invention; 
(c) every person who has been identified in the statement 
referred to in subsection (2)(b) as the inventor or a joint 
inventor of the invention; and 
(d) every other person who is shown in the register as having a 
right in or under the patent.". 
(3) Section 38(5)(a) is amended by repealing ", shall be filed in 
duplicate" . 
(4) Section 38(5)(b) is amended by repealing "The Registrar shall send a 
copy of the counter-statement" and substituting "A person who files a counter­
statement shall, at the same time, send a copy of it". 
15. Amendment of specification after grant 
Section 39 is repealed. 
16. Surrender of patents 
(1) Section 40(3)(a) is amended by repealing "and be filed in duplicate". 
(2) Section 40(3)(b) is amended by repealing "in duplicate". 
(3) Section 40(3) is amended by repealing "Registrar shall" and 
substituting "opponent shall, at the same time as he files the notice,". 
(4) Section 40(4)(a) is amended by repealing "and be filed in duplicate". 
(5) Section 40(4) is amended by repealing "Registrar" and substituting 
"proprietor" . 
17. Registrar's power to revoke patent on 
grounds of "ordre public" or morality 
under section 49 of the Ordinance 
(1) Section 41(1)(a) is amended by repealing "and be filed in duplicate". IPIN/l/HKG/P/3/ Add A 
Page 11 
(2) Section 41(1)(b) is amended by repealing "in duplicate". 
(3) Section 41 (2) is amended by repealing "The Registrar shall" and 
substituting "The applicant shall, at the same time as he files the reference,". 
(4) Section 41(3)(a) is amended by repealing "and be filed in duplicate". 
(5) Section 41(3) is amended by repealing "Registrar" and substituting 
"proprietor" . 
18. Section substituted 
Section 42 is repealed and the following substituted-
"42. Address for service in respect of patents 
(1) Every person concerned in any proceedings before the Registrar 
shall file an address for service. 
(2) The address for service must be a residential or business address 
in Hong Kong. 
(3) A person may file an address for service-
(a) where the person files any specified form that requires the 
person who completes it to provide an address for service, 
by filing the specified form with the address for service 
stated on it; or 
(b) in any other case, by notifying the Registrar in writing. 
(4) Where a specified form referred to in subsection (3)(a) is filed in 
the name of 2 or more persons, the address for service stated on that form 
shall be treated as the address for service of each of those persons. 
(5) An applicant for a patent or the proprietor of a patent may use 
only one address for service for the purposes of all proceedings before the 
Registrar concerning that application or patent. 
(6) Subject to any filing to the contrary under this section, on the 
grant of an application for a patent, the address for service of the 
applicant shall be treated as the address for service of the proprietor of the 
patent for the purposes of all proceedings before the Registrar concerning 
that patent. 
(7) Where a person files an address for service for the purposes of 
any proceedings before the Registrar, that address shall be treated as 
being in substitution for any address for service previously filed by that 
person for the purposes of those proceedings. 
(8) Where, after a person has become a party to proceedings before 
the Registrar, the person appoints an agent for the first time or appoints 
one agent in substitution for another, the newly appointed agent shall file 
an address for service. IP/N/1IHKGIP13/AddA 
Page 12 
(9) No act required or authorized by the Ordinance or these Rules 
to be done by or to a person referred to in subsection (8) in connection 
with the proceedings in question may be done by or to the newly 
appointed agent before the date on which he files an address for service. 
(10) Any person may withdraw his address for service by notifying 
the Registrar in writing. 
42A. Failure to file address for service 
(1) Where an address for service is not filed as required by section 42, 
or where the Registrar is satisfied that the address for service of the 
proprietor of a patent or a party to any proceedings before the Registrar 
is no longer valid, the Registrar may send to the person concerned, at any 
of the addresses referred to in subsection (2), a notice to file an address for 
serVIce. 
(2) For the purposes of subsection (1), the addresses are­
(a) any previously filed address for service of the person; 
(b) any address of the person in Hong Kong that is shown in 
the register; 
(c) any residential or business address of the person in Hong 
Kong; and 
(d) any other address of the person that is known to the 
Registrar. 
(3) If any person to whom a notice is sent under subsection (1) fails 
to file an address for service within 2 months after the date of the notice­
(a) any application (other than an application for a patent), 
notice or request filed by that person shall be treated as 
abandoned or withdrawn; and 
(b) the person shall be deemed to have withdrawn from any 
proceedings before the Registrar of which he is a party 
(other than as an applicant for a patent). 
(4) This section is without prejudice to the operation of sections 17 
and 68.". 
19. Alteration of name or address 
Section 45(3) is amended by repealing "in the specified form" and 
substituting "made in the specified form or by notice in writing". 
20. Registration of transactions, etc., in relation 
to patents and patent applications 
Section 46(2)(a) is amended by adding "or on behalf of' before "the 
assignor" . 21. Correction of errors in patents and 
applications under section 146 of the 
Ordinance IP/N/1IHKGIP/3/Add.4 
Page 13 
(1) Section 48(5) is amended by repealing "and be filed in duplicate". 
(2) Section 48(6) is repealed and the following substituted-
"(6) The opponent shall, at the same time as he files the notice, send 
a copy of the notice and the statement to the person making the request. 
(6A) If the person making the request desires to proceed with the 
request, he shall, within 3 months from the date of the sending of the 
copies to him-
(a) file a counter-statement in the specified form setting out 
fully the grounds on which he contests the opposition; 
(b) pay the prescribed fee; and 
(c) send a copy of the counter-statement to the opponent.". 
22. Request as to payment of renewal fee 
Section 49 is repealed. 
23. Sections amended 
Sections 51(3) and 90(2) are amended by repealing "rule" and substituting 
"section" . 
24. Section substituted 
Section 52 is repealed and the following substituted-
"52. Order or direction by court 
(1) Where the court makes any order or gives any direction under 
any provision of the Ordinance except section 46 or 102 of the Ordinance, 
the person in whose favour the order or direction is made or given shall 
file a sealed copy of the order or direction with the Registrar. 
(2) Where the court makes any order under section 46 or 102 of the 
Ordinance, the person in whose favour the order is made shall file with the 
Registrar a copy of any documents referred to in the order that show the 
amendments to be made, together with such translations of those 
documents as may be required under section 56 of these Rules. 
(3) The documents and translations referred to in subsection (2) 
shall be filed at such time as a copy of the order is filed with the Registrar 
in accordance with the order or direction made by the court or rules of 
court." . IP/N/1/HKG/P/3/ Add.4 
Page 14 
25. The language of proceedings before the 
Registrar 
(1) Section 56(1) is amended by repealing "such translation to be 
certified to the satisfaction of the Registrar as corresponding to the original 
text" and substituting "and such translation shall state the name of the 
translator and his official capacity, if any". 
(2) Section 56(2)( c) is amended by adding "or in Chinese characters" 
after "if not in the Roman alphabet". 
26. Applications for the grant of short-term 
patents under section 113 of the Ordinance 
(1) Section 58(5)(b) is repealed. 
(2) Section 58( 5)( c) is amended by repealing "verified". 
27. Size and presentation of documents 
(1) Section 62(1)( a) is amended by repealing" direct". 
(2) Section 62(5) and (6) is repealed. 
(3) Section 62(7) is amended by repealing "and such numbering shall be 
placed at the top of the sheet, in the middle, but not in the top margin". 
(4) Section 62(8) is repealed. 
(5) Section 62(15) is amended by repealing "rule" and substituting 
"section" . 
28. Procedure where applicant is not the 
inventor or sole inventor 
Section 65(b) is repealed and the following substituted-
"(b) the Registrar shall send a copy of the statement to each inventor who 
is not one of the applicants.". 
29. Rectification of deficiencies in short-term 
patent applications 
Section 68(1) is amended by repealing "verified". 
30. Claiming priority under section 111 of the 
Ordinance 
(1) Section 69(3) is repealed and the following substituted-IP/N/l/HKGIP13/AddA 
Page 15 
"(3) The copy of the previous application as referred to in section 
111 (1) of the Ordinance shall be accompanied by a copy of a certificate 
issued by the authority that received the application and that states the 
date of filing of the application.". 
(2) Section 69(5) is amended by repealing", instead of filing a verified 
copy of the previous application,". 
31. Agents 
Section 85(4) and (5) is repealed and the following substituted-
"(4) A person who is authorized by another person to act as his agent 
shall, on or before the first occasion on which he acts as agent, notify the 
Registrar of the address in Hong Kong where he resides or carries on his 
business activities, which notice shall be given in the specified form or in 
writing. 
(5) If a person who has given notice under subsection (4) changes 
the address in Hong Kong where he resides or carries on his business 
activities, he shall notify the Registrar of the change as soon as practicable 
thereafter, which notice shall be given in the specified form or in writing. 
(6) No act required or authorized by the Ordinance or these Rules 
to be done by or to any person may be done by or to an agent of that 
person before the date on which the agent notifies the Registrar in 
accordance with subsection (4). 
(7) The Registrar may refuse to recognize as an agent in respect of 
any business under the Ordinance or these Rules-
(a) a person who has been convicted of a criminal offence; 
(b) a person whose name has been struck off the roll of 
barristers or roll of solicitors kept under and in accordance 
with the Legal Practitioners Ordinance (Cap. 159) or any 
person who has been suspended from acting as a barrister 
or solicitor; 
(c) a partnership or body corporate of which one of the 
partners or directors is a person whom the Registrar could 
refuse to recognize as an agent under paragraph (a) or (b); 
(d) a person against whom a disqualification order has been 
made under section 168E, 168F, 168G, 168H, 168J or 168L 
of the Companies Ordinance (Cap. 32); 
( e) a person against whom an order has been made under 
section 23(l)(a) or 24(1) of the repealed Securities (Insider 
Dealing) Ordinance (Cap. 395); or IP/N/1IHKGIP13/Add.4 
Page 16 
(f) a person against whom an order has been made under 
section 214(2)(d), 257(1)(a), 258(1) or 303(2)(a) of the 
Securities and Futures Ordinance (Cap. 571). 
Note: Section 140(4) of the Ordinance provides that the Registrar shall 
refuse to recognize as an agent a person who neither resides nor 
has a place of business in Hong Kong.". 
32. Request for information under section 147 of 
the Ordinance 
Section 88(2) is amended by repealing "and shall be accompanied by the 
prescribed fee". 
33. Restriction on inspection of documents 
under section 147 of the Ordinance 
Section 89(1) is amended-
(a) in paragraph (d), by repealing "49, 50(2), 51(2) or 88" and 
substituting "50(2), 51(2) or 88 of these Rules"; 
(b) in paragraph (e), by repealing "and" at the end; 
(c) in paragraph (f), by repealing the full stop and substituting "; 
and'" , 
(d) by adding-
"(g) subject to the restrictions prescribed in paragraphs (a) to 
(f), only documents kept by the registry shall be open to 
inspection." . 
34. Bibliographic information for purposes of 
section 147(3) of the Ordinance 
Section 91 is amended by adding-
"(ca) the address for service relating to the application; 
(cb) if the application has been filed by an agent, the name of the agent 
and the address in Hong Kong where he resides or carries on his 
business activities; 
(cc) the name and address of any person whose name and address the 
Registrar is required to communicate to any other person under 
section 3;". 
35. Section substituted 
Section 93 is repealed and the following substituted-"93. Filing of documents with the Registrar IPIN11IHKGIPI3/Add.4 
Page 17 
(l) Any document or other thing required or authorized by the 
Ordinance or these Rules to be filed with the Registrar must be delivered 
by hand to the Registrar at the registry during the normal business hours 
of the registry or sent to the Registrar by post. 
(2) Sending by post shall be deemed to be effected by properly 
addressing, preparing and posting a letter containing the document or 
other thing, with the postage on it prepaid, to the Registrar at the office of 
the registry; and the document or thing shall be deemed to have been 
received at the time when the letter is actually received by the Registrar at 
the registry. 
(3) The filing of a document or other thing with the Registrar shall 
be deemed to be effected at such time as it is received by the Registrar at 
the registry and is recorded as received. 
93A. Electronic filing 
(l) The Registrar may at his discretion permit, as an alternative to 
the filing of a document or other thing with the Registrar in a paper or 
other physical form, the filing of an electronic record of that document or 
thing. 
(2) The Registrar may at his discretion permit, as an alternative to 
delivering or sending a document or other thing to the Registrar in the 
manner provided by section 93, the sending of an electronic record of that 
document or thing by electronic means to an information system 
designated by the Registrar. 
(3) The filing of an electronic record, and the sending of an 
electronic record by electronic means to the information system 
designated under subsection (2), shall be subject to such terms as the 
Registrar may specify either generally by notice published in the official 
journal or in any particular case by notice to the person desiring to file an 
electronic record or to send an electronic record to the Registrar by 
electronic means. 
(4) Where, in accordance with this section, a document or other 
thing in the form of an electronic record is sent by electronic means to the 
information system designated under subsection (2), the filing of that 
document or thing shall be deemed to be effected at such time as that 
electronic record is accepted by the designated information system. 
93B. Terms for electronic filing 
(l) Without limiting the generality of section 93A(3), the Registrar 
may specify terms under that section-IPINIlIHKGIP!3! Add A 
Page 18 
(a) providing for the approval by the Registrar of the process 
that must be used to make or send an electronic record; 
(b) providing for the approval by the Registrar of the format or 
media in which an electronic record must be recorded or 
stored; 
(c) respecting the manner of authenticating an electronic record 
in circumstances where the document or other thing in 
question is required to be signed or sealed or authenticated 
m any manner; 
(d) requiring any document or other thing sent to the Registrar 
in the form of an electronic record to include or be 
accompanied by the electronic signature or digital signature 
of the person who sends it; and 
(e) respecting the manner of filing a document or other thing in 
cases where there is an interruption in the operation of the 
information system designated under section 93A(2). 
(2) Without limiting the generality of section 93A(3), the Registrar 
may refuse to accept or to register any document or other thing that is in 
the form of an electronic record if-
(a) the information contained in the electronic record is not 
capable of being displayed in a legible form; 
(b) the electronic record is not capable of being stored in the 
information system designated under section 93A(2); 
(c) the electronic record appears to the Registrar to be altered, 
damaged or incomplete; 
(d) any electronic signature or digital signature or other kind of 
authentication accompanying or included with the 
electronic record appears to the Registrar to be altered or 
incomplete; or 
(e) any term specified by the Registrar under that section has 
been breached. 
93C. Designation of electronic mail box 
(1) On the request of any person, the Registrar may designate an 
electronic mail box within an information system designated by the 
Registrar which may be used by that person to communicate with the 
Registrar. 
(2) The use by any person of an electronic mail box within the 
designated information system shall be subject to such terms as the 
Registrar may specify either generally by notice published in the official 
journal or in any particular case by notice to the person for whom the 
electronic mail box is designated. IPIN/1IHKGIP/3/ Add.4 
Page 19 
(3) Where the Registrar designates an electronic mail box for a 
person under this section, any document or other thing required or 
authorized by the Ordinance or these Rules to be sent by the Registrar to 
that person shall be deemed to be properly sent if it is sent in the form of 
an electronic record to that person's designated electronic mail box. 
(4) Sending to a designated electronic mail box shall be deemed to 
be effected at such time as the electronic record is accepted by the 
designated information system. 
(5) An electronic record sent to a designated electronic mail box 
shall be deemed to be received by the addressee at such time as the 
electronic record is accepted and recorded by that electronic mail box. 
93D. Service of documents 
(l) Except as provided by sections 93, 93A, 93B and 93C, where any 
document or other thing is required or authorized by the Ordinance or 
these Rules to be sent to any person-
(a) the document or other thing may be left at, or sent by post 
to, the address for service of the person; or 
(b) if the person does not have an address for service, the 
document or other thing may be sent by post to his last 
known address. 
(2) Sending by post shall be deemed to be effected by properly 
addressing, preparing and posting a letter containing the document or 
other thing, with the postage on it prepaid, to the address for service of 
the person or, if he does not have an address for service, at his last known 
address, and unless the contrary is shown, the document or thing shall be 
deemed to have been received by that person at the time when the letter 
would be delivered in the ordinary course of post. 
93E. Form in which the records of the 
registry are kept, etc. 
(l) The Registrar shall determine the form in which the records of 
the registry are constituted and kept and may determine the period for 
which such records, or any document or other thing kept by the registry, 
shall be kept and the circumstances in which they may be destroyed or 
otherwise disposed of. 
(2) Where the Registrar keeps a record of a document or other thing 
in a form that differs from that in which the document or thing was 
originally filed with, or originally generated by, the Registrar, the record 
of that document or thing shall be presumed, unless the contrary is shown, 
to accurately represent the information contained in the document or 
thing as originally filed or generated.". IPINI1IHKGIP131 AddA 
Page 20 
36. Alteration of time limits 
Section 100(2) is amended by repealing "39(1),". 
37. Section added 
The following is added-
"100A. Extension of time limits in the case of 
an interruption in the registry's 
operations 
(1) Where on any day there is an event or circumstances causing an 
interruption in the normal operation of the registry, the Registrar may 
notify the day as being one on which there is an interruption in the 
operations of the registry. 
(2) Where any period of time specified in the Ordinance or these 
Rules, or as extended under these Rules, for the filing of any document or 
other thing with the Registrar expires on a day so notified, the period shall 
be extended to the first day next following (not being an excluded day) 
that is not so notified. 
(3) Any notification given by the Registrar under this section shall 
be posted in the registry. 
(4) In this section, "excluded day" UFi¥0 S) means a day that is not 
a business day of the registry.". 
38. Section substituted 
Section 102 is repealed and the following substituted-
"102. Verification of documents 
For the purposes of the Ordinance and these Rules, a filed copy of a 
document shall be treated as a verified copy if the person filing it confirms 
in writing to the Registrar that it is a true copy of a document issued by 
or kept at the relevant designated patent office.". 
39. Application under section 13(4) of the 
Transitional Rules 
(1) Section 108(1) is amended by repealing "and shall be filed III 
duplicate" . IPINIl/HKG/P/3/ Add.4 
Page 21 
(2) Section 108(2) is amended by repealing "The Registrar shall send a 
copy of the application" and substituting "The applicant shall, at the same 
time as he files the application, send a copy of it". 
(3) Section 1 08(3) is amended by repealing "Registrar" and substituting 
" opponent" . 
(4) Section 108(4) is amended by repealing ", shall be filed in duplicate". 
40. Section added 
The following is added-
"113. Transitional provision relating to the 
Patents (General) (Amendment) Rules 
2004 
The amendments to sections 3, 4, 6, 7, 35, 37, 38, 40, 41, 48 and 108 
of these Rules effected by sections 4, 5, 6, 12, 13, 14, 16, 17,21 and 39 of 
the Patents (General) (Amendment) Rules 2004 (L.N. 37 of 2004) do not 
apply to proceedings pending before the Registrar on the commencement 
of those sections, which proceedings shall continue as if those 
amendments had not been made.". 
41. Micro-organisms 
(1) Schedule 1 is amended, in paragraph 2(1), by repealing "and shall be 
filed in quadruplicate". 
(2) Schedule 1 is amended, in paragraph 2(2), by repealing "copies of the 
forms" and substituting "a copy of the form". 
42. Fees 
Schedule 2 is amended-
(a) in Fee No.1, in the third column, by repealing "700" and 
substituting "190"; 
(b) in Fee No. 2-
(i) in the second column, by repealing "3(4), 4(4)" and 
substituting "3(7)"; 
(ii) in the second column, by repealing "48(5) or (6)" and 
substituting "48(5) or (6A)"; 
(iii) in the third column, by repealing "1,200" and substituting 
"325'" , 
(c) in Fee No.3, in the third column, by repealing "700" and 
substituting" 190"; IPINIIIHKGIP131 AddA 
Page 22 
(d) in Fee Nos. 4 and 5, in the third column, by repealing "1,400" 
and substituting "380"; 
(e) in Fee No.6, in the third column, by repealing "2,800" and 
substituting "755"; 
(f) in Fee No. 7-
(i) in the second column, by adding", under section 15 or 23 of 
the Ordinance" after "grant"; 
(ii) in the third column, by repealing "Such amount as is fixed 
by the Registrar with the approval of the Financial 
Secretary and published in the Gazette." and substituting 
"68"· , 
(g) in Fee No. 8-
(i) in the second column, by adding "under section 113 of the 
Ordinance" after "patent"; 
(ii) in the third column, by repealing "Such amount as is fixed 
by the Registrar with the approval of the Financial 
Secretary and published in the Gazette." and substituting 
"68"· , 
(h) in Fee No. 9-
(i) in the second column, by adding", under section 11 or 21" 
after "grant"; 
(ii) in the third column, by repealing "350" and substituting 
"95" . , 
(i) in Fee No. 10-
(i) in the second column, by adding "under section 68(6)" after 
"patent" ; 
(ii) in the third column, by repealing "350" and substituting 
"95"· , 
(j) in Fee No. 11-
(i) in the second column, by adding "under section 33 of the 
Ordinance" after "patent application"; 
(ii) in the third column, by repealing "1,000" where it twice 
appears and substituting "270"; 
(k) in Fee No. 12, in the third column, by repealing "350" and 
substituting "95"; 
(I) in Fee No. 13-
(i) in the second column, by adding "under section 39 of the 
Ordinance" after "patent"; 
(ii) in the third column, by repealing "2,000" where it twice 
appears and substituting "540"; 
(m) in Fee No. 14, in the third column, by repealing "1,000" and 
substituting "270"; 
(n) in Fee No. 15-JP/N/IIHKG/P/3/ AddA 
Page 23 
(i) in the second column, by adding "under section 126 of the 
Ordinance" after "patent"; 
(ii) in the third column, by repealing "4,000" and substituting 
"1 080"· , , 
(0) in Fee No. 16, in the third column, by repealing "1,000" and 
substituting "270"; 
(p) in Fee Nos. 17 and 18, in the third column, by repealing "1,500" 
wherever it appears and substituting "405"; 
(q) in Fee No. 19, in the third column, by repealing "500" and 
substituting" 135"; 
(r) in Fee No. 20, in the third column, by repealing "700" where it 
twice appears and substituting "190"; 
(s) in Fee No. 21, in the third column, by repealing "1,200" and 
substituting "325"; 
(t) in Fee No. 22, in the third column, by repealing "500" and 
substituting" 135"; 
(u) by repealing Fee Nos. 23 and 24; 
(v) in Fee No. 25, in the third column, by repealing "800" and 
substituting "215"; 
(w) in Fee Nos. 26 and 27, in the third column, by repealing "700" 
and substituting "190"; 
(x) in Fee Nos. 28 and 29, in the third column, by repealing "350" 
wherever it appears and substituting "95". 
6 March 2004 
Explanatory Note S. R. SELBY 
Registrar of Patents 
These Rules amend the Patents (General) Rules (Cap. 514 sub. leg. C) 
("the principal Rules") to facilitate the electronic filing and processing of 
patent applications, to streamline the procedures in the Patents Registry ("the 
registry"), to reduce the fees payable on the filing of documents with the 
registry and to delete obsolete provisions. The amendments relating to 
electronic filing and processing are in furtherance of the amendments made to 
the Patents Ordinance (Cap. 514) ("the Ordinance") by the Intellectual 
Property (Miscellaneous Amendments) Ordinance 2001 (2 of 2001). IPINIIIHKG/P/3/ Add.4 
Page 24 
2. Section 2(1) and (2) makes technical amendments to the definitions of 
"International Patent Classification" and "send" in section 2(1) of the 
principal Rules. Section 2(3) adds the new definitions of "digital signature", 
"electronic record", "electronic signature" and "information system". The 
terms are used in the new sections 93A, 93B and 93C which are added by 
section 35 of these Rules. Section 2(4) and (5) repeals section 2(2)(a) and 
amends section 2(2)(b) of the principal Rules in consequence of the addition of 
the new sections 93A, 93B and 93C. 
3. Section 3 adds the new section 2A to the principal Rules which will enable 
the Registrar of Patents ("the Registrar") to accept electronic forms. 
4. Section 4 replaces sections 3 and 4 of the principal Rules with a new 
section that consolidates the provisions of the two existing sections, with 
revisions. The new section 3 omits the requirement for certain documents to be 
filed in duplicate and requires the party initiating the proceedings, instead of 
the Registrar, to serve certain documents on interested parties. 
5. Sections 5, 6, 13, 14, 16, 17, 21 and 39 amend sections 6, 7, 37, 38, 40, 41, 
48 and 108 of the principal Rules to delete the requirements for certain 
documents to be filed in duplicate and to require the party initiating the 
proceedings, instead of the Registrar, to serve certain documents on interested 
parties. 
6. Section 7 amends section 8(2)(a)(i) of the principal Rules to delete the 
requirement for the documents required under section 15(2)(a) of the 
Ordinance to be filed in duplicate. 
7. Sections 8, 9, 10 and 27 amend sections 9, 12, 19 and 62 of the principal 
Rules to delete obsolete provisions relating to the form of documents. 
8. Section 11(1) amends section 28(1) of the principal Rules to delete the 
requirement for a maintenance application to be signed by the applicant. 
Section 11 (2) makes a technical amendment to the Chinese text of section 28(3) 
of the principal Rules. 
9. Section 12(1) changes the time limit in section 35(1) of the principal Rules 
from 3 months to 6 months. Section 12(2) amends section 35(2) of the principal 
Rules. The amended section consolidates the requirements under section 43(1) 
of the Ordinance and adds a new requirement that the documents filed under 
that section be accompanied by a specified form and with such translations as 
may be required under section 56 of the principal Rules. 
10. Section 15 repeals section 39 of the principal Rules. Section 36 makes a 
related consequential amendment to section 100(2) of the principal Rules. IPIN/l/HKG/P/3/ Add.4 
Page 25 
11. Section 18 replaces section 42 of the principal Rules with two new 
provisions relating to addresses for service. The new section 42 requires a 
person who is concerned in any proceedings before the Registrar to file an 
address for service, which must be a residential or business address in Hong 
Kong, and provides for the manner of filing or withdrawing an address for 
service and for related matters. The new section 42A deals with the failure to 
file an address for service. 
12. Section 19 amends section 45(3) of the principal Rules to allow the person 
making the request the option of filing a notice in writing instead of a specified 
form. 
13. Section 20 amends section 46(2)(a) of the principal Rules to allow the 
application or notice for registration to be signed by a person on behalf of the 
assIgnor. 
14. Section 22 repeals section 49 of the principal Rules. 
15. Section 23 makes a technical amendment to sections 51(3) and 90(2) of the 
principal Rules. 
16. Section 24 replaces section 52 of the principal Rules with a new provision 
that requires a person in whose favour any order or direction has been made or 
given by the court under any provision of the Ordinance (except section 46 or 
102 of the Ordinance) to file a sealed copy of the order or direction with the 
Registrar and, in the case of an order made under section 46 or 102 of the 
Ordinance, a copy of other specified documents. 
17. Section 25(1) amends section 56(1) of the principal Rules to delete the 
requirement for the translation to be certified and to require that the name and 
official capacity of the translator be given instead. Section 25(2) amends 
section 56(2)(c) of the principal Rules to delete the requirement for a 
transliteration of the name of the applicant if that name is in Chinese 
characters. 
18. Section 26(1) repeals section 58(5)(b) of the principal Rules which requires 
an application for the grant of a short-term patent to contain the designation 
of the classification of the invention. Section 26(2) amends section 58(5)(c) of 
the principal Rules to delete the requirement for a verified copy of the previous 
application. 
19. Sections 28 and 41 amend section 65(b) and paragraph 2 of Schedule 1 of 
the principal Rules, respectively, to delete the requirement for additional 
copies of the specified form. 
20. Section 29 amends section 68(1) of the principal Rules to delete the 
requirement for a verified copy of the document. IPIN/1/HKG/P/3/ AddA 
Page 26 
21. Section 30 amends section 69(3) and (5) of the principal Rules to allow a 
copy of the certificate to be filed instead of the original and to delete the 
requirement for a verified copy of the previous application. 
22. Section 31 amends section 85 of the principal Rules to require an agent to 
notify the Registrar of the address in Hong Kong where he resides or carries 
on his business activities and to revise the list of persons whom the Registrar 
may refuse to recognize as an agent. 
23. Section 32 deletes the reference to the prescribed fee in section 88(2) of the 
principal Rules. 
24. Section 33 adds section 89(1)(g) to the principal Rules to make clear that 
only documents that are kept by the registry are open to inspection. It also 
amends section 89(1)( d) in consequence of the repeal of section 49 of the 
principal Rules (see section 22 of these Rules). 
25. Section 34 amends section 91 of the principal Rules to allow the Registrar 
to disclose under section 147(3) of the Ordinance the address for service and 
other specified bibliographic information relating to an unpublished 
application for a standard patent or short-term patent. 
26. Section 35 replaces section 93 of the principal Rules with new provisions 
governing the filing and service of documents and the keeping of records by 
the Registrar. The new section 93 provides for documents to be delivered by 
hand or sent by post to the Registrar. The new sections 93A and 93B provide 
for the electronic filing of documents and enable the Registrar to specify the 
terms for electronic filing in the official journal. The new section 93C enables 
the Registrar to designate an electronic mail box which may be used by the 
person for whom it is designated to communicate with the Registrar. The new 
section 93D specifies the manner in which documents shall be served. The new 
section 93E allows the Registrar to determine the form and content of the 
registry's records and the circumstances in which records and documents may 
be disposed of. 
27. Section 37 adds the new section 100A to the principal Rules which 
provides that if a deadline expires on the day on which there is an interruption 
in the normal operations of the registry, it shall be extended to the next 
business day. 
28. Section 38 revises section 102 of the principal Rules to allow the person 
filing the document to confirm in writing to the Registrar that it is a true copy 
of a document issued by or kept at the relevant designated patent office. 
29. Section 40 adds the new section 113 to the principal Rules which provides 
that the amendments to sections 3, 4, 6, 7, 35, 37, 38, 40,41, 48 and 108 do not 
apply to proceedings pending on the commencement of those amendments. 
30. Section 42 reduces certain fees set out in Schedule 2 to the principal Rules 
and makes technical amendments to some of the fee descriptions.