WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
0RGANIZACI0N MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects of 
Intellectual Property Rights IP/N/1/HKG/P/1 
20 March 2000 
(00-1128) 
Original: English/ 
anglais/ 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY 
LAWS AND REGULATIONS NOTIFIED UNDER 
ARTICLE 63.2 OF THE AGREEMENT 
HONG KONG, CHINA 
The present document reproduces the text1 of the Patents Ordinance, as notified by Hong 
Kong, China under Article 63.2 of the Agreement (see document IP/N/l/HKG/2). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETE INTELLECTUELLE NOTIFIEES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
HONG KONG, CHINE 
Le present document contient le texte1 de l'Ordonnance sur les brevets, notifiee par 
Hong Kong, Chine au titre de l'article 63:2 de l'Accord (voir le document IP/N/l/HKG/2). 
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 vmTUD DEL PARRAFO 2 
DEL ARTICULO 63 DEL ACUERDO 
HONG KONG, CHINA 
En el presente documento se reproduce el texto 1 de la Orden sobre Patentes notificado por 
Hong Kong, China en virtud del parrafo 2 del articulo 63 del Acuerdo ( vease el documento 
IP/N/l/HKG/2). 
1 In English only./En anglais seulement./En ingles solamente. IP/N/1/HKG/P/l 
Page2 
514 title: 
H.eading: ·. P~tJ'.EWTSO:RllfNANCE 
Lo:~g;title Oaze:tte.·Niu~faer: 
Version Oat~: 30l06fl997 
An Ordinance to make new provision in respect of patents and related matters in substitution for the 
Registration of Patents Ordinance. 
[The Ordinance, other than 
section 125 
Section 125 
(Originally 52 of 1997) } 
} 27 June 1997 
1 July 1997 L.N. 367 of 1997] c,~pter1 
sectipli: SJ4 
l Tht~! 
Headhlgt PATENTS ORDJNAN,Ce 
Short JitJe 
PART I 
PRELIMINARY 
(1) This Ordinance may be cited as the Patents Ordinance. 
(2) (Omitted as spent) IP/N/1/HKG/P/1 
Page 3 
Qazett.e Ntm1be·r: . · •· 
Ver$fon Date~ J(M0i5.Fl997 IP /NI l/HKG/P/1 
Page4 
Qij~p;~t 
Sedfon: 
Remarks: tide~ 
Headitlg~ JMtfENT$J)RD1NA~NPE · .. 
lnterpreta.tiun Paze;e Nun1ber:~ · 25 <,fJ998.s. 2. 
Ver$fon Date: Olif/7/ 1991 
Amendments retroactively made-see 25 of 1998 s. 2 
( 1) In this Ordinance, unless the context otherwise requires-
" application for a patent" means an application for a standard patent or an application for a 
short-term patent; 
"court" means the Court of First Instance; (Amended 25 of 1998 s. 2) 
"date of filing" -
( a) in relation to a request to record or a request for registration and grant, means the date 
which is the date of filing that request by virtue of section 17 or 24 respectively; 
(b) in relation to an application for a standard patent has the meaning specified in relation to that 
tenn in section 3(ii); 
( c) in relation to a designated patent application, means the date specified as such in the 
designated patent application; 
'1employee11 means a person who works or (where the employment has ceased) worked under a 
contract of employment (whether with the Government or with any other person); 
"employer", in relation to an employee, means the person by whom the employee is or was 
employed; 
"exclusive licence" means a licence from the proprietor of or applicant for a patent conferring 
on the licensee, or on him and persons authorized by him, to the exclusion of all other persons 
(including the proprietor or applicant), any right in respect of the invention to which the patent or 
application for a patent relates, and "exclusive licensee" and "non-exclusive 
licence" shall be construed accordingly; 
"international application" means an international application for a patent made under the 
Patent Cooperation Treaty; 
"International Bureau" means the International Bureau of Intellectual Property provided for 
under the Convention Establishing the World Intellectual Property Organization signed at Stockholm 
on 14 July 1967; 
"law of the designated patent office" means-
( a) in relation to a designated patent office established under the law of any country, territory or 
area other than Hong Kong, the law of that country, territory or area; 
(b) in relation to a designated patent office established under an international agreement, the 
provisions of the international agreement; 
"mortgage" when used as a noun, includes a charge for securing money or money's worth and, 
when used as a verb, shall be construed accordingly; 
"non-prejudicial disclosure" means, in relation to an invention, a disclosure of the 
invention which is not to be taken into consideration for the purposes of determining whether or not 
the invention forms part of the state of the art; 
"opposition or revocation proceedings" means, in relation to a 
designated patent, proceedings under the law of the designated patent office providing for the 
revocation or amendment of the designated patent within a specified period after the grant; 
11Paris Convention11 means the Convention for the Protection of Industrial Property 
signed at Paris on 20 March 1883; 
"Paris Convention country" means-
( a) any country for the time being specified in Schedule I as being a country which has acceded 
to the Paris Convention; 
(b) any territory or area subject to the authority or under the suzerainty of any country specified 
in Schedule 1 pursuant to paragraph ( a), or any territory or area administered by any such 
country, on behalf of which such country has acceded to the Paris Convention; 
"patent application" has the same meaning as an application for a patent; "Patent Cooperation Treaty" means the treaty of that name done at Washington 
on 19 June 1970; IP/N/1/HKG/P/1 
Page 5 
"patented invention" means an invention for which a standard patent or, as the case may be, 
a short-term patent is granted and "patented process" shall be construed accordingly; 
"patented product" means-
(a) a product which is an invention for which a standard patent or a short-term patent (as the 
case may be) has been granted; 
(b) in relation to a process for which a standard patent or a short-term patent (as the case may 
be) has been granted, a product obtained directly by means of the process or to which the 
process has been applied; 
11prescribed11 means prescribed or provided for by rules made under section 149; 
"protected layout-design (topography)" has the meaning assigned to 
that term by section 2(1) of the Layout-design (Topography) oflntegrated Circuits Ordinance (Cap 
445); 
"register"-
(a) as a noun, means the register of patents kept under section 51; and 
(b) as a verb, means, in relation to any thing, to register or register particulars, or enter notice of 
that thing in the register and, in relation to a person, means to enter his name in the register, 
and cognate expressions shall be construed accordingly; 
"Registrar" means the Registrar of Patents; 
"Registrar of Patents" means the person holding that office by virtue of the Director 
of Intellectual Property (Establishment) Ordinance (Cap 412); 
"registry" means the Patents Registry administered by the Registrar; 
"request for registration and grant" means a request under section 23 for the 
registration of a designated patent and the grant of a standard patent for the invention shown in the 
published specification of the designated patent; 
"request to record" means a request under section 15 to record a designated patent 
application; 
"right", in relation to any patent or patent application, includes an interest in the patent or 
application and, without prejudice to the foregoing, any reference to a right in a patent includes a 
reference to a share in the patent; 
"rules" means rules made by the Registrar under section 149; 
"short-term patent" means a patent for an invention granted under Part XV; 
"short-term patent application" means an application under Part XV for a short-term 
patent; 
"specification"', in relation to an application for a patent under this Ordinance, a designated 
patent application or an international application, means the description, claims and drawings contained 
in the application; 
"standard patent" means a patent for an invention granted under Part II; 
"standard patent application" means an application under Part II for a standard patent; 
"verified copy" means, in relation to a document, a copy verified in the prescribed manner; 
"World Trade Organisation Agreement" means the agreement of that name 
done at Marrakesh in 1994; 
"WTO member country, territory or area" means any 
country, territory or area for the time being specified in Schedule 1 as being a country, territory or 
area which has llcceded to the World Trade Organisation Agreement. 
(2) The expressions listed in the left-hand column below are defined in, or fall to be construed in 
accordance with, the provisions of this Ordinance listed in the right-hand column in relation to those 
expressions. 
Expression 
Application for a standard patent 
Corresponding designated patent 
Corresponding designated patent application Relevant Provision 
section 3 
section 4 
section 4 IP/N/1/HKG/P/l 
Page 6 
Deemed date of filing 
Designated patent 
Designated patent application 
Divisional designated patent application 
Government use 
Paris Convention country 
Patent 
Published 
Work section 38 
section 4 
section 4 
section 22( I) 
section 69(2) 
section 98(6) 
section 6(1) 
section 5 
section 6( 4) Cfu1:pt{:r: 
Sectfori: 514 
3 Title: 
Heading: Meaning: of 't~pplic:+-ation(or Version Date: 
a standard patent" IP/N/1/HKG/P/1 
Page 7 
Expanded Cross Reference: 
15,16, 17, 18, 19,20,21, 23,24,25,26,27 
In this Ordinance, unless the context otherwise requires, reference to an application for a standard 
patent is a reference to proceedings under Part II-
( a) under sections 15 to 22 to record a designated patent application; and <* Note-Exp. x-Ref: 
Sections 15, 16, 17, 18, 19, 20, 21, 22 *> 
(b) under sections 23 to 27 for the registration of a designated patent and the grant of a standard 
patent for the invention shown in the published specification of the designated patent, <* 
Note-Exp. x-Ref: Sections 23, 24, 25, 26, 27 *> 
up to but not including the grant of the standard patent, and cognate expressions shall be construed 
accordingly; and reference to-
(i) the filing of an application for a standard patent is a reference to the filing of a request to 
record; 
(ii) the date of filing an application for a standard patent is a reference to the date of filing a 
request to record; 
(iii) an application for a standard patent as filed is a reference to a request to record as filed; 
(iv) the publication of an application for a standard patent is a reference to the publication of a 
request to record; 
(v) an invention which is the subject of an application for a standard patent, or an invention in 
respect of which an application for a standard patent has been made, is a reference to the 
invention disclosed in the specification of the corresponding designated patent or, if no 
request for registration and grant has been filed in the application, of the designated patent 
application; 
(vi) the specification of an application for a standard patent is a reference to the specification of 
the corresponding designated patent application. IP/N/1/HKG/P/l 
Page 8 
Chapter: 
Section: · .·5}4 
4 · Title: 
Heading~· Pl\'.'fENTS••O.RDIN~&'iCE· 
M:ea,1ing.•ijff~d~ign~ted 
patent", etc. 
( 1) In this Ordinance, unless the context otherwise requires-
" designated patent" means a patent granted by a designated patent office; 
"designated patent application" means-
(a) an application in a designated patent office for a patent, which application has been 
published under the law of the designated patent office; 
(b) an international application which has been published and which has validly entered its 
national phase in a designated patent office; 
"designated patent office" means a patent office designated for the purpose of this 
Ordinance under section 8. 
(2) In this Ordinance, unless the context otherwise requires, a reference-
( a) to a "corresponding designated patent'1 in relation to a standard patent, is a reference to the 
designated patent which was registered under section 27 in an application for the grant of the 
standard patent; 
(b) to a II corresponding designated patent application" -
(i) in relation to an application for a standard patent for an invention, is a reference to the 
designated patent application in respect of that invention; 
(ii) in relation to a standard patent, is a reference to the designated patent application in 
pursuance of which the corresponding designated patent was granted. Ch;pter: Title: 
Se¢tj<:rm Hea.<iing:: .. PATENTS ORDINANCE 
· Me:tni~g ~, it )l1bl.shet1•~ · · · Ga:tetfo Nµmber:: 
Version Pate:. IP/N/1/HKG/P/1 
Page9 
( 1) In this Ordinance, unless the context otherwise requires-
( a) "published" means made available to the public (whether in Hong Kong or 
elsewhere); and 
(b) a document shall be taken to be published under any provision of this Ordinance if it can be 
inspected as of right at any place in Hong Kong by members of the public, whether on 
payment of a fee or not. 
(2) Without prejudice to subsection (1 ), and unless the context otherwise requires, a reference in this 
Ordinance-
( a) to the grant of a standard patent being published is a reference to its being published under 
section 27; 
(b) to a request to record being published is a reference to its being published under section 20; 
( c) to a designated patent being published is a reference to its being published by the designated 
patent office by which the patent was granted for the purposes of the law of that office 
relating to applications for and the granting of patents; 
( d) to a designated patent application being published is a reference-
(i) except as provided in subparagraph (ii), to its being published by the designated patent 
office in which the application was made; 
(ii) in the case of a designated patent application based on an international application, to 
the international application being published by the International Bureau under the 
Patent Cooperation Treaty, or by the designated patent office in which the application 
was made, whichever is the earlier; 
( e) to a short-term patent being published is a reference to its being published under section 
118. IP/N/1/HKG/P/1 
Page 10 
(1) Unless the context otherwise requires, a reference in this Ordinance to a patent is a reference to a 
standard patent or a short~tenn patent granted under this Ordinance. 
(2) Unless the context otherwise requires, a reference in this Ordinance to an international agreement 
is a reference to-
( a) the agreement, or any other international agreement replacing it, as may from time to time 
be amended or supplemented by or in accordance with any international agreement 
(including any protocol or annex); 
(b) any instrument made under any such agreement to provide for amendment to or 
supplementation of the agreement. 
(3) Unless the context otherwise requires, a reference in this Ordinance to an enactment or law of a 
country, territory or area other than Hong Kong shall be construed as a reference to that enactment or law 
as it may from time to time be amended or extended by or under any other enactment or law of the country, 
territory or area. 
( 4) Unless the context otherwise requires, a reference in this Ordinance to an invention being worked 
in Hong Kong includes a reference to the invention being worked by importation into Hong Kong for the 
purpose of putting the patented product on the market or stocking it for that purpose. 
(5) For the purposes of this Ordinance matter shall be taken to have been disclosed in any designated 
patent application or in the specification of a patent or a designated patent if it was either claimed or 
disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in any such application or 
specification. 
[cf. 1977 c. 37 s. 130(3) U.K.] Cbfet¢f:: 
Se¢ti()ri}· : :Pro,<isforur.tegarding/fiJing Versioo·D~te: 
of documents, etc. IP/N/1/HKG/P/1 
Page 11 
In this Ordinance, unless the context otherwise requires, a reference providing for the filing of any 
document with the Registrar shall be deemed to include a reference requiring the payment of any fee that 
may be prescribed for the filing of that document, and a document shall be deemed not to be duly filed for 
the purposes of this Ordinance unless any such fee as may be prescribed for the filing of the document is 
paid as so prescribed. IP/N/ 1/HKG/P /1 
Page 12 
c1faptet? •· > s14 
Ser:ti-On; 8 
Remarks: ;titlef··. 
.He~fog: ... •. :·PAtENJSOf{OUiitNCE. •.. ·tiaztt~:Numbet; @:?.9f'J999 
· · io~sigmi;tio•n pf pa.te~l:o1Jic~ ¥erii-0; Date! Ql/9:7/1>991'1:: 
Amendments retroactively made -see 22 of 1999 s. 3 
The Chief Executive in Council may for the purposes of this Ordinance by notice published in the 
Gazette designate a patent office established under the law of any country, territory or area other than Hong 
Kong or established under any international agreement. 
(Amended 22 of 1999 s. 3) Chapten 
S:e~tion: 5T4. 
9 Ti:tl:e::. 
H~dingt. IP/N/1/HKG/P/1 
Page 13 
PATH·ffSOROINA.NdE · · O~tt¢: Numnet': 
Spe~iat.·pr~r:1siun.·.re~;lrd:i,;.· .. ¥~rsi6n.•Date: 
inv~ntion toy:tt~dJ>y:2 OT: · · 
more patents 
Where there are in effect 2 or more patents for the same invention, any use of the invention which 
does not constitute an infringement of any one such patent (whether by virtue of consent given by the 
proprietor, a compulsory licence having effect under Part VIII or the provisions of Part IX relating to 
Government use) shall not constitute an infringement of the other such patent. IP/N/1/HKG/P/1 
Page 14 
Chapter: 
Secti:9m 5l4 
10 r:me~ 
Heading; PATENTS, O.RDrNA:NCE Ga1Jrtt<!Nun1~r: 
Qen~ral prirdsio.n Vendot:l Date~ 30106/ 1997 
t.egardjng applications for 
standard patents 
Expanded Cross Reference: 
·15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27 
PART II 
APPLICATIONS FOR STANDARD PATENTS 
Introduction 
This Part shall be construed as providing for the grant of a standard patent for an invention in the 
following circumstances, and only in those circumstances, namely where-
(a) an application for a patent for that invention has been filed in and published by a designated 
patent office ( and in this Ordinance a patent application so filed and published is referred to 
as a "designated patent application"); 
(b) as the first stage of an application for a standard patent, the designated patent application has 
been recorded in the register and published in Hong Kong in accordance with sections 15 to 
22; <* Note-Exp. x-Ref: Sections 15, 16, 17, 18, 19, 20, 21, 22 *> 
( c) a patent has been granted in the designated patent office in pursuance of the designated 
patent application (and in this Ordinance such a patent is referred to as a "designated 
patent"); and 
( d) as the second stage of the application for a standard patent, the designated patent has been 
registered in accordance with sections 23 to 27. <* Note-Exp. x-Ref: Sections 23, 24, 25, 
26, 27 *> Chapt~r: 
S~c:tlon~ $14 
11· :ritle: 
Heading: . . 
Pl\'IENTS QRD.INANCE . Ga:.eette Number: 
,, . . . .'•. --' ., ,· ' . IP /N/1/HKG/P /1 
Page 15 
Forttta:litt :~i~mimltio~ of Version Dare: J0jf:j5Jl997 
applk:atfo¥a:s.(o:r.•st#id:ard 
patent 
Except as expressly provided to the contrary, nothing in this Part providing for the examination by the 
Registrar of an application for a standard patent for an invention shall be construed as imposing upon the 
Registrar any obligation to consider or to have regard to, for the purpose of such examination, any question 
as to-
(a) the patentability of the invention; 
(b) whether the applicant is entitled to any priority claimed in the application; 
( c) whether the invention is properly disclosed in the application; or 
(d) whether any requirement under sections 45, 77, 78, 79, 93, 94, 95, 96, 97, 98, 99 or 100 
has been complied with. IP/N/1/HKG/P/1 
Page 16 
Chtt:ptet: 
Section: 514 
12 Title.: PATENTS:oRDINANQE . G~ette Number; 
H:eadittg: Wh~ may ipply · . : Ver$io~.Date~ 30106/J.997 
Right to apply 
( 1) The person who may apply for the grant of a standard patent for an invention is-
( a) the person named as applicant in a designated patent application for a patent for the 
invention, or his successor in title to the rights under the designated patent application in 
Hong Kong; or 
(b) in preference to the person mentioned in paragraph (a), the person who is entitled to the 
property in the invention in Hong Kong. 
(2) Subject to any determination under section 13, the applicant for a standard patent for an 
invention in proceedings before the Registrar shall for the purpose of those proceedings be deemed to be the 
person entitled to apply for the grant of a patent for that invention under subsection ( 1 ). 
[cf. 1977 c. 37 s. 7 U.K.] Ch~t¢t:: 
Section: 13 ,,. > . ' •,:. ·.·.·· :-··.-··< ': 
. . Qetenrdnati~t1/befo1·e g,-3;nt Version:J)ate; 
of gu$tioris ado l'YDO rtt~y 
apply · IP /N/1/HKG/P/l 
Page 17 
(l) At any time before a standard patent has been granted for an invention (whether or not an 
application has been made for a standard patent for the invention)-
( a) any person may refer to the Registrar or the court the question of whether he is entitled 
under section 12 (alone or with other persons) to apply for the grant of a standard patent for 
the invention; or 
(b) any of 2 or more joint proprietors of an application for a patent for that invention may so 
refer the question whether any right in or under the application should be transferred or 
granted to any other person. 
(2) The Registrar or the court may make such order as he or it thinks fit to give effect to a 
determination under this section. 
(3) Where a question is referred to the Registrar or the court under this section after an application 
for a standard patent has been filed but before a standard patent is granted in pursuance of the application 
then the Registrar or the court may, unless the application is withdrawn before the reference is disposed of 
by the Registrar or the court-
( a) order that the application for a standard patent shall proceed in the name of that person, 
either solely or jointly with that of any other applicant, instead of in the name of the 
applicant or any specified applicant; 
(b) where the reference was made by 2 or more persons, order that the application shall 
proceed in all their names jointly; or 
( c) make an order transferring or granting any licence or other right in or under the application 
and give directions to any person for carrying out the provisions of any such order. 
(4) Where a person refers a question under subsection (l)(b) relating to an application, any order 
under subsection (2) may contain directions to any person for transferring or granting any right in or under 
the application. 
(5) If any person to whom directions have been given under subsection (3)(c) or (4) fails to do 
anything necessary for carrying out any such directions within 14 days after the date of the directions, the 
Registrar or the court may on application made to him or it by any person in whose favour or on whose 
reference the directions were given authorize him to do that thing on behalf of the person to whom the 
directions were given. 
(6) No order shall be made under subsection (3) unless notice of such reference is given in the 
prescribed manner to-
( a) the applicant for the standard patent (not being a party to the reference); or 
(b) any other person ( not being a party to the reference) who it is alleged in the reference has 
the right, by virtue of any transaction, instrument or event relating to the invention or the 
application, to apply for the grant of the standard patent whether alone or with any other 
person, 
and any person receiving such notice may oppose the reference. 
(7) No directions shall be given under this section so as to affect the mutual rights or obligations of 
trustees or of the personal representatives of deceased persons, or their rights or obligations as such. 
[cf. 1977 c. 37 s. 8 U.K.] IP/N/1/HKG/P/l 
Page 18 
Ch~pter: 
S,ectkm; 514 
14 Thl{!:: 
Hooding: P:ATENTS.:Qf{OiNANCE 
Effect.1)f•tt~~,f:e:r··uf 
.a.p.pliJ.ation tttt\d~:r· si-c;tfon 13· . . . Gaze~ Number: 
Version Date: 
(1) Where an order is made or directions are given under section 13 that an application for a standard 
patent shall proceed in the name of one or some of the original applicants (whether or not it is also to 
proceed in the name of some other person), any licences or other rights in or under the application shall, 
subject to the order and any directions under that section, continue in force and be treated as granted by the 
persons in whose name the application is to proceed. 
(2) Where an order is made or directions are given under section 13 that an application for a patent 
shall proceed in the name of one or more persons none of whom was an original applicant ( on the ground 
that the original applicant or applicants was or were not entitled to apply under section 12 for the grant of 
the patent), any licences or other rights in or under the application for a standard patent shall, subject to the 
order and any directions under that section and subject to subsection (3), lapse on the registration of that 
person or those persons as the applicant or applicants or, where the application for a standard patent has not 
been published, on the making of the order. 
(3) If before a reference to the Registrar or the court under section 13 resulting in the making of any 
order mentioned in subsection (2)-
(a) the original applicant or any of the applicants, acting in good faith, worked the invention in 
question in Hong Kong or made effective and serious preparations to do so; or 
(b) a licensee of the applicant, acting in good faith, worked the invention in Hong Kong or made 
effective and serious preparations to do so, 
that or those original applicant or applicants or the licensee shall, on making a request within the prescribed 
period to the person in whose name the application is to proceed, be entitled to be granted a licence (but not 
an exclusive licence) to continue working or, as the case may be, to work the invention. 
( 4) Any such licence shall be granted for a reasonable period and on reasonable terms. 
(5) Where an order is made as mentioned in subsection (2), the person in whose name the 
application is to proceed or any person claiming that he is entitled to be granted any such licence may refer 
to the Registrar or the court the question whether the latter is so entitled and whether any such period is or 
terms are reasonable, and the Registrar or the court, as appropriate, shall determine the question and may, if 
he or it considers it appropriate, order the grant of such a licence. 
(6) The Registrar or the court may make such order as he or it thinks fit to give effect to a 
determination under subsection ( 5). 
[cf. 1977 c. 37 s. 11 U.K.] Chapt¢t~ 
S¢~i:on~ 514 
15 Title: ; .. ·, ', .. 
Heading: ·.fii.ling>Qfreq~~sttoteco-t:d · Version Oat¢j 
Request to record a designated patent application IP /N/1/HKG/P / 1 
Page 19 
(1) A person entitled under section 12(1) to apply for the grant of a standard patent for an invention 
may, at any time within 6 months after the date of publication of an application in a designated patent office 
for a patent for the invention, request the Registrar to enter a record of that designated patent application in 
the register (in this Ordinance referred to as a "request to record"). 
(2) Every such request shall be signed by the applicant and be filed with the Registrar in the 
prescribed manner and shall contain-
(a) a photocopy of the designated patent application as published, that is to say, including any 
description, claims, drawings, search report or abstract published together with the 
designated patent application; 
(b) where the designated patent application does not contain the name of any person as being 
the inventor, a statement identifying the person or persons whom the applicant believes to 
be the inventor or inventors; 
( c) the name and address of the person making the request; 
( d) where the person filing the request is a person other than the person named as applicant in 
the designated patent application, a statement explaining his entitlement to apply for the 
grant of a standard patent for the invention and prescribed documents supporting that 
statement; 
( e) a statement indicating whether or not priority is claimed under section 98 in respect of a 
right of priority enjoyed in the designated patent office on the basis of an earlier application 
as mentioned in that section and, where the statement indicates that priority is so claimed, 
details of-
(i) the date of priority claimed; 
(ii) the country in which the earlier application was filed; 
(f) a statement indicating whether or not at the time of filing the designated patent application a 
claim was made in accordance with the law of the designated patent office in respect of any 
previous disclosure of the invention that was, for the purposes of the law of the designated 
patent office, a non-prejudicial disclosure and, if the statement indicates that such a claim 
was made, prescribed details relating to such previous disclosure; and 
(g) an address in Hong Kong for service of documents. 
(3) Every such request shall also comply with the requirements of this Ordinance as to the provision 
of information in, or the translation of documents into, one· or both official languages. 
( 4) A filing fee and an advertisement fee shall be payable within 1 month after the earliest filing with 
the Registrar of any part of the request to record, and if either fee is not paid within that period or within 
such further period as may be allowed under subsection (5) the application for a standard patent shall be 
deemed to be withdrawn. 
(5) Rules may provide for a period of grace within which a filing fee or advertisement fee that has 
not been paid within the time limit specified in subsection (4) may still be validly paid. 
(6) Subsection (1) shall not apply in respect of a designated patent application published before the 
date on which the designated patent office was designated under section 8. 
(7) Nothing in: this section shall preclude a request to record being initiated by documents complying 
with section 17. 
[cf. EPC Art. 78; 1977 c. 37 s. 14 U.K.] IP/N/1/HKG/P/1 
Page 20 
Chapt~r~ 
Section:< ··to· PATSNTS:O.RDIN.t\NCE . Gamn~[Nijrnber: . 
. :O~$~g~at,a pate~t · · · · Ver$ipn f)ate: 30/0t$/ 1991 
. <Jppl~~tinn b~~:on 
internatfonat·application 
Where a designated patent application is the national phase of an international application under the 
Patent Cooperation Treaty, then-
( a) for the purposes of section 15(1), and notwithstanding section 5(2)(d)(ii), the date of 
publication of the designated patent application shall be-
(i) the date of such publication in the designated patent office as serves to indicate that 
the international application has validly entered its national phase in the designated 
patent office; or 
(ii) such other date as may be prescribed in rules, being a date not earlier than the date on 
which the international application has validly entered its national phase in the 
designated patent office; 
(b) reference in section 15(2)( a) to a photocopy of the designated patent application shall be 
read as reference to-
(i) a photocopy of the international application as published by the International Bureau; 
(ii) a photocopy of any translation of the international application published by the 
designated patent office; and 
(iii) a photocopy of any publication of infonnation in the designated patent office 
concerning the international application; 
( c) the statement required for the purposes of section 15(2)( e) shall be a statement indicating 
whether or not priority is claimed under section 98, and if claimed whether so claimed on 
the basis of a right of priority claimed in the designated patent office, or claimed in the 
international application and accepted in the designated patent office, and mentioned in the 
corresponding designated patent application; 
(d) section 17(1)(c) shall have effect in such manner as may be specified in rules made for the 
purposes of this section. Chapter: 
Section~ 514 
55 · 1'i'tler 
.Heading: PATENTS, ORDfNANCE 
• D:~ttrm:ination of tight t() 
patent after grant Ga1,.ette <Nurnber; IP IN/ 1 /HK G/P/1 
Page 61 
Version Date: 30/-06.t 1997 
( 1) After a patent has been granted for an invention any person having or claiming a proprietary 
interest in or under the patent may refer to the court the question-
(a) who is or are the true proprietor or proprietors of the patent; 
(b) whether the patent should have been granted to the person or persons to whom it was 
granted; or 
( c) whether any right in or under the patent should be transferred or granted to any_ other person 
or persons, 
and the court shall determine the question and make such order as it thinks fit to give effect to the 
determination. 
(2) Without prejudice to the generality of subsection (1), an order under that subsection may contain 
provision-
(a) directing that the person by whom the reference is made under that subsection shall be 
included (whether or not to the exclusion of any other person) among the persons registered 
as proprietors of the patent; 
(b) directing the registration of a transaction, instrument or event by virtue of which that person 
has acquired any right in or under the patent; 
( c) granting any licence or other right in or under the patent; 
( d) directing the proprietor of the patent or any person having any right in or under the patent to 
do anything specified in the order as necessary to carry out the other provisions of the order. 
(3) If any person to whom directions have been given under subsection (2)(d) fails to do anything 
necessary for carrying out any such directions within 14 days after the date of the order containing the 
directions, the court may, on application made to it by any person in whose favour or on whose reference 
the order containing the directions was made, authorize him to do that thing on behalf of the person to 
whom the directions were given. 
( 4) Where the court finds on a reference under this section that the patent was granted to a person 
not entitled to be granted that patent (whether alone or with other persons) and on an application made 
under section 91 makes an order on that ground for the conditional or unconditional revocation of the 
patent, the court may order that the person by whom the application was made or his successor in title may, 
subject to section 103, make a new application for a patent-
(a) in the case of unconditional revocation, for the whole of the matter comprised in the 
specification of that patent; and 
(b) in the case of conditional revocation, for the matter which in the opinion of the court should 
be excluded from that specification by amendment under section 102. 
(5) Where a new application for a patent is made under subsection ( 4), it shall be treated-
(a) as having been filed on the date of filing the application to which the reference relates; and 
(b) as having the same date of filing and, where the reference under this section is in respect of 
a standard patent, as having the same deemed date of filing, as the application to which the 
reference relates. 
(6) Where the reference under this section is in respect of a standard patent, the court may order in 
respect of any new application under subsection ( 4 )-
(a) that all or any of the requirements of section 15(2) or (3) or 23(3) or (4) be dispensed with; 
and 
(b) that the person making the new application shall for the purposes of that application be 
deemed to have filed a request to record having the same date of filing as the request to 
record in the application for the patent to which the reference relates. 
(7) On any such reference as is mentioned in subsection ( 4) no order shall be made under this 
section transferring the patent to which the reference relates on the ground that the patent was granted to a 
person not so entitled, and no order shall be made under subsection (4) on that ground, if the reference was 
made after the end of 2 years beginning with the date of the grant, unless it is shown that any person IP /NI 1 /HKG/P / 1 
Page 62 
registered as a proprietor of the patent knew at the time of the grant or, as the case may be, of the transfer 
of the patent to him that he was not entitled to the patent. 
(8) Where a question is referred to the court under this section an order shall not be made by virtue 
of subsection (2) or under subsection ( 4) on the reference unless notice of the reference is given to all 
persons registered as proprietor of the patent or as having a right in or under the patent except those who are 
parties to the reference. 
[cf. 1977 c. 37 s. 37 U.K.] Chapter~ 
Section: 5+4 
56 Tide: 
· Heading~ IP/N/1/HKG/P/1 
Page 63 
PATE}rI1iOR0INANCE Gazette Ntunberz 
· .Effeetoftran~fer of.pa.te.nf•· · Version Date: · lQi06tt997 
under section 55 
(1) Where an order is made under section 55 that a patent shall be transferred from any person or 
persons (the old proprietor or proprietors) to one or more persons (whether or not including an old 
proprietor), then, except in a case falling within subsection (2), any licences or other rights granted or 
created by the old proprietor or proprietors shall, subject to section 50 and to the provisions of the order, 
continue in force and be treated as granted by the person or persons to whom the patent is ordered to be 
transferred (the new proprietor or proprietors). 
(2) Where an order is so made that a patent shall be transferred from the old proprietor or 
proprietors to one or more persons none of whom was an old proprietor ( on the ground that the patent was 
granted to a person not entitled to be granted the patent), any licences or other rights in or under the patent 
shall, subject to the provisions of the order and subsection (3 ), lapse on the registration of that person or 
those persons as the new proprietor or proprietors of the patent. 
(3) Where an order is so made that a patent shall be transferred as mentioned in subsection (2) or 
that a person other than an old proprietor may make a new application for a patent and before the reference 
of the question under section 55 resulting in the making of any such order is registered, the old proprietor or 
proprietors or a licensee of the patent, acting in good faith, worked the invention in question in Hong Kong 
or made effective and serious preparations to do so, the old proprietor or proprietors or the licensee shall on 
making a request to the new proprietor or proprietors within the prescribed period be entitled to be granted a 
licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention, so 
far as it is the subject of the new application. 
( 4) Any such licence shall be granted for a reasonable period and on reasonable terms. 
( 5) The new proprietor or proprietors of the patent or any person claiming that he is entitled to be 
granted any such licence may refer to the court the question whether that person is so entitled and whether 
any such period is or terms are reasonable, and the court shall determine the question and may, if it 
considers it appropriate, order the grant of such a licence. 
[cf. 1977 c. 37 s. 38 U.K.] IP/N/1/HKG/P/l 
Page 64 
Chap;~r: 
Section: · 514 
51 r.me: 
.Beading~ P:AtfEN:rs.ORDlNA:NCE 
kigbt:to. employ~:esf 
inventions 
PART VI 
EMPLOYEES' INVENTIONS G~wtte Number~ 
Version .Date: 30/:06/l997 
(1) Notwithstanding anything in any rule of law, an invention made by an employee shall, as between 
him and his employer, be taken to belong to his employer for the purposes of this Ordinance and all other 
purposes if-
(a) it was made in the course of the normal duties of the employee or in the course of duties 
falling outside his normal duties, but specifically assigned to him, and the circumstances in 
either case were such that an invention might reasonably be expected to result from the 
carrying out of his duties; or 
(b) the invention was made in the course of the duties of the employee and, at the time of 
making the invention, because of the nature of his duties and the particular responsibilities 
arising from the nature of his duties he had a special obligation to further the interests of the 
employer's undertaking. 
(2) Any other invention made by an employee shall, as between him and his employer, be taken for 
those purposes to belong to the employee. 
(3) Where by virtue of this section an invention belongs, as between him and his employer, to an 
employee, nothing done-
( a) by or on behalf of the employee or any person claiming under him for the purposes of 
pursuing an application for a patent; or 
(b) by any person for the purpose of performing or working the invention, 
shall be taken to infringe any protected layout-design (topography) right to which, as between him and his 
employer, his employer is entitled in any model or document relating to the invention. 
[ cf. 1977 c. 37 s. 39 U.K.] Chapter: 
Sectiom 514 
58 nw:~ 
}foading: IP/N/1/HKG/P/1 
Page 65 
PATENTS ORDINANCE Gazette Numbet~ 
Compensation: of:employees· Version Date: 30/06/1997 
for certain inventions 
(1) Where it appears to the court on an application made by an employee within the prescribed 
period that-
( a) the employee has made an invention belonging to the employer for which a patent has been 
granted; 
(b) the patent is (having regard among other things to the size and nature of the employer's 
undertaking) of outstanding benefit to the employer; and 
( c) by reason of those facts it is just that the employee should be awarded compensation to be 
paid by the employer, 
the court may award him such compensation of an amount determined under section 59. 
(2) Where it appears to the court on an application made by an employee within the prescribed 
period that-
(a) a patent has been granted for an invention made by and belonging to the employee; 
(b) his rights in the invention, or in any patent or application for a patent for the invention, have 
since the commencement of this section been assigned to the employer or an exclusive 
licence under the patent or application for a patent has since the commencement of this 
section been granted to the employer; 
( c) having regard to all the circumstances of the case, including the terms of the contract of 
assignment or grant or any ancillary contract ("the relevant contract"), the benefit derived by 
the employee from the relevant contract is inadequate in relation to the benefit derived by 
the employer from the patent; and 
( d) by reason of those facts it is just that the employee should be awarded compensation to be 
paid by the employer in addition to the benefit derived from the relevant contract, 
the court may award him such compensation of an amount determined under section 59. 
(3) Subsection (2) shall have effect notwithstanding anything in the relevant contract or any 
agreement applicable to the invention. 
( 4) References in this section to an invention belonging to an employer or an employee are 
references to it so belonging as between the employer and the employee. 
[cf. 1977 c. 37 s. 40 U.K.] IP /N/1/HKG/P /1 
Page 66 
C:haptef; · 
Sectioil~ . $J4 
59 Titi¢~ 
.Heading: .. G~ett~ Num.~r: 
·.··, ·.··:· .·· ·. ·: ·. ".·.·' ;-,·· '',' >' 
·t:\m<tnnt ofcompettsatiotl · Version Pate~· .. · JQ!-06H997 
(1) An award of compensation to an employee under section 58(1) or (2) in relation to a patent for 
an invention shall be such as will secure for the employee a fair share (having regard to all the 
circumstances) of the benefit which the employer has derived, or may reasonably be expected to derive, 
from-
( a) the patent; or 
(b) the assignment or grant to a person connected with the employer of-
(i) the property or any right in the invention; or 
(ii) the property in, or any right in or under, an application for that patent. 
(2) For the purposes of subsection (1), the amount of any benefit derived or expected to be derived 
by an employer from the assignment or grant of-
( a) the property in, or any such right in or under-
(i) a patent for the invention; or 
(ii) an application for such a patent; or 
(b) the property or any right in the invention, 
to a person connected with him shall be taken to be the amount which could reasonably be expected to be 
so derived by the employer if that person had not been connected with him. 
(3) In determining the fair share of the benefit to be secured for an employee in respect of a patent 
for an invention which has always belonged to an employer, the court shall, among other things, take the 
following matters into account, that is to say-
(a) the nature of the employee's duties, his remuneration and the other advantages he derives or 
has derived from his employment or has derived in relation to the invention under this 
Ordinance; 
(b) the effort and skill which the employee has devoted to making the invention; 
( c) the effort and skill which any other person has devoted to making the invention jointly with 
the employee concerned, and the advice and other assistance contributed by any other 
employee who is not a joint inventor of the invention; and 
( d) the contribution made by the employer to the making, developing and working of the 
invention by the provision of advice, facilities and other assistance, by the provision of 
opportunities and by his managerial and commercial skill and activities. 
( 4) In determining the fair share of the benefit to be secured for an employee in respect of a patent 
for an invention which originally belonged to him, the court shall, among other things, take the following 
matters into account, that is to say-
( a) any conditions in a licence or licences granted under this Ordinance or otherwise in respect 
of the invention or the patent; 
(b) the extent to which the invention was made jointly by the employee with any other person; 
and 
( c) the contribution made by the employer to the making, developing and working of the 
invention as mentioned in subsection (3)(d). 
(5) Any order for the payment of compensation under section 58 may be an order for the payment 
of a lump sum or for periodical payment, or both. 
(6) Without prejudice to section 39(1) of the Interpretation and General Clauses Ordinance (Cap 1), 
the refusal of the court to make any such order on an application made by an employee under section 58 
shall not prevent a further application being made under that section by him or any successor in title of his. 
(7) Where the court has made any such order, the court may on the application of either the 
employer or the employee vary or discharge it or suspend any provision of the order and revive any 
provision so suspended. 
[cf. 1977 c. 37 s. 41 U.K.] Ch~pter: 
Section: 544 
60 Title: 
Head:ing; . RATENTSORDlNk~CE · Oaze~eNumber; IP /N/1/HKG/P /1 
Page 67 
E:nfnrteablHty ofe.ontratts . Ver~ioo Da~: 30/06:/:1997 
r:eladngto. tlll;pfoyec$' 
lriventions 
(1) This section applies to any contract (whenever made) relating to inventions made by an 
employee, being a contract entered into by him-
(a) with the employer (alone or with another); or 
(b) with some other person at the request of the employer or in pursuance of the employee1s 
contract of employment. 
(2) Any term in a contract to which this section applies which diminishes the employee's rights in 
inventions of any description made by him after the commencement of this section and the date of the 
contract, or in or under patents for those inventions or applications for such patents, shall be unenforceable 
against him to the extent that it diminishes his rights in an invention of that description so made, or in or 
under a patent for such an invention or an application for any such patent. 
(3) Subsection (2) is without prejudice to any duty of confidentiality owed to his employer by an 
employee by virtue of any rule of law or otherwise. 
( 4) This section applies to any arrangement made with a public officer in the course of his duties as it 
applies to any contract made between an employee and an employer other than the Government. 
[cf. 1977 c. 37 s. 42 U.K.] IP/N/1/HKG/P/1 
Page 68 
Chapter: 
Sectkni; 514 
. 6J Tide; 
Hwing: ·. .PATENTS •OR.P.lNANC$ 
Su · pfement:;u·y Oa:zette Nµmoer: · 
VersfotrDate~ J0/0611997: 
Expanded Cross Reference: 
57,58,59,60 
(1) Sections 57 to 60 shall not apply to an invention made before the commencement of this 
Ordinance. <* Note-Exp. x-Ref: Sections 57, 58, 59, 60 *> 
(2) Sections 57 to 60 shall not apply to an invention made by an employee unless at the time he 
made the invention one of the following conditions was satisfied in his case, that is to say-<* Note-Exp. 
x-Ref: Sections 57, 58, 59, 60 *> 
(a) he was mainly employed in Hong Kong; or 
(b) he was not mainly employed anywhere or his place of employment could not be determined, 
but his employer had a place of business in Hong Kong to which the employee was 
attached, whether or not he was also attached elsewhere. 
(3) In sections 57 to 60 and this section, except so far as the context otherwise requires, references 
to the making of an invention by an employee are references to his making it alone or jointly with any other 
person, but do not include references to his merely contributing advice or other assistance in the making of 
an invention by another employee. <* Note-Exp. x-Ref: Sections 57, 58, 59, 60 *> 
(4) Any references in sections 57 to 60-<* Note-Exp. x-Ref: Sections 57, 58, 59, 60 *> 
(a) to a patent are references to a patent or other forms of protection for an invention; 
(b) to a patent being granted are references to its being granted, 
whether under the law of Hong Kong or the law in force in any other country, territory or area or under any 
treaty or international convention. 
(5) For the purposes of sections 58 and 59 the benefit derived or expected to be derived by an 
employer from a patent shall, where he dies before any award is made under section 58 in respect of the 
patent, include any benefit derived or expected to be derived from the patent by his personal representatives 
or by any person in whom the patent was vested by their assent. 
(6) Where an employee dies before an award is made under section 58 in respect of a patented 
invention made by him, his personal representatives or their successors in title may exercise his right to 
make or proceed with an application for compensation under subsection (1) or (2) of that section. 
(7) In sections 58 and 59 and this section "benefit" means benefit in money or money's 
worth. 
(8) In section 59(2)-
"person connected with", in relation to an employer, means-
( a) where the employer is a natural person-
(i) a relative of the employer; 
(ii) a partner of the employer and any relative of that partner; 
(iii) a partnership in which the employer is a partner; 
(iv) any corporation controlled by the employer, by a partner of the employer or by a 
partnership in which the employer is a partner; 
(v) any director or principal officer of any such corporation as is referred to in 
subparagraph (iv); 
(b) where the employer is a corporation­
(i) any associated corporation; 
(ii) any person who controls the corporation and any partner of such person, and, where 
either such person is a natural person, any relative of such person; 
(iii) any director or principal officer of that corporation or of any associated corporation 
and any relative of any such director or officer; 
(iv) any partner of the corporation and, where such partner is a natural person, any relative 
of such partner; 
( c) where the employer is a partnership-
(i) any partner of the partnership and where such partner is a partnership any partner of IP/N/1/HKG/P/l 
Page 69 
that partnership, any partner with the partnership in any other partnership and where 
such partner is a partnership any partner of that partnership and where any partner of, 
or with, or in any of the partnerships mentioned in this subparagraph is a natural 
person, any relative of such partner; 
(ii) any corporation controlled by the partnership or by any partner thereof or, where such 
a partner is a natural person, any relative of such partner; 
(iii) any corporation of which any partner is a director or principal officer; 
(iv) any director or principal officer of a corporation referred to in subparagraph (ii); 
and for the purposes of that definition-
" associated corporation", in relation to a person, means-
( a) a corporation over which the person has control; 
(b) if the person is a corporation-
(i) a corporation which has control over the person; or 
(ii) a corporation which is under the control of the same person as is the first-mentioned 
person; 
11control", in relation to a corporation, means the power of a person to secure-
(a) by means of the holding of shares or the possession of voting power in or in relation to that 
or any other corporation; or 
(b) by virtue of any powers conferred by the articles of association or other document 
regulating that or any other corporation, 
that the affairs of the first-mentioned corporation are conducted in accordance with the wishes of that 
person; 
"principal officer" means-
( a) a person employed by a corporation who, either alone or jointly with one or more other 
persons, is responsible under the immediate authority of the directors for the conduct of the 
business of the corporation; or 
(b) a person so employed who, under the immediate authority of a director of the corporation or 
a person to whom paragraph (a) applies, exercises managerial functions in respect of the 
corporation; 
"relative" means the spouse, parent, child, brother or sister of the relevant person, and, in deducing 
such a relationship, an adopted child shall be deemed to be a child both of the natural parents and the 
adopting parent and a step child to be the child of both the natural parents and of any step parent. IP/N/1/HKG/P/l 
Page 70 
Chapter: 
S®ti()n: 514. 
62 ·Tide: Gaz«tte Nwnber~ 
. . . . . . . 
Headitig~· Avoidan:ce·of:etr:tain Version Date: S-OIQ6/l997 • 
restrictive conditions 
PART VII 
CONTRACTS AS TO PATENTED PRODUCTS, ETC. 
(1) Subject to this section, any condition or term of a contract for the supply of a patented product 
or of a licence to work a patented invention, or of a contract relating to any such supply or licence, shall be 
void in so far as it purports-
( a) in the case of a contract for supply, to require the person supplied to acquire from the 
supplier, or his nominee, or prohibit him from acquiring from any specified person, or from 
acquiring except from the supplier or his nominee, anything other than the patented product; 
(b) in the case of a licence to work a patented invention, to require the licensee to acquire from 
the licensor or his nominee, or prohibit him from acquiring from any specified person, or 
from acquiring except from the licensor or his nominee, anything other than the product 
which is the patented invention or (if it is a process) other than any product obtained directly 
by means of the process or to which the process has been applied; 
( c) in either case, to prohibit the person supplied or licensee from using articles (whether 
patented products or not) which are not supplied by, or any patented process which does 
not belong to, the supplier or licensor, or his nominee, or to restrict the right of the person 
supplied or licensee to use any such articles or process. 
(2) Subsection (1) does not apply to contracts made or licences granted before the commencement 
of this Ordinance. 
(3) In proceedings against any person for infringement of a patent it shall be a defence to prove that 
at the time of the infringement there was in force a contract relating to the patent made by or with the 
consent of the plaintiff or a licence under the patent granted by him or with his consent and containing in 
either case a condition or term void by virtue of this section. 
( 4) A condition or tenn of a contract or licence shall not be void by virtue of this section if~ 
(a) at the time of the making of the contract or granting of the licence the supplier or licensor 
was willing to supply the product, or grant a licence to work the invention, as the case may 
be, to the person supplied or licensee, on reasonable terms specified in the contract or 
licence and without any such condition or term as is mentioned in subsection (1); and 
(b) the person supplied or licensee is entitled under the contract or licence to relieve himself of 
his liability to observe the condition or tenn on giving to the other party 3 months' notice in 
writing and subject to payment to that other party of such compensation (being, in the case 
of a contract to supply, a lump sum or rent for the residue of the term of the contract and, in 
the case of a licence, a royalty for the residue of the term of the licence) as may in default 
of agreement between the parties be determined by an arbitrator appointed by the parties. 
(5) If in any proceeding it is alleged that any condition or term of a contract or licence is void by 
virtue of this section it shall lie on the supplier or licensor to prove the matters set out in subsection (4)(a). 
( 6) A condition or term of a contract or licence shall not be void by virtue of this section by reason 
only-
( a) that it prohibits any person from selling goods other than those supplied by a specified 
person; or 
(b) in the case of a contract for the hiring of or licence to use a patented product, that it reserves 
to the bailor or licensor, or his nominee, the right to supply such new parts of the patented 
product as may be required to put or keep it in repair. 
[ cf. 1977 c. 37 s. 44 U.K.] Chapter: 
Section: 514· 
27 Title; 
Heading: IP/N/1/HKG/P/l 
Page 31 
PATEN'TS OROlNANCE Gaze® Number~ 
.R1.,~istration of:design~ted Version.Oat;e,; 30/06/1997 
patent and grant of patent 
( 1) If on examination under section 26( 1) a request for registration and grant is found to have 
satisfied the requirements of section 23(3) and ( 4) or if on a subsequent examination the deficiencies noted 
under section 26(2) are found to have been corrected in accordance with the rules, then the Registrar shall 
as soon as practicable after such examination, but subject to section 37-
(a) register the designated patent by making an appropriate entry in the register; and 
(b) grant a standard patent for the invention shown in the published specification of the 
designated patent as filed under section 23(3)(a) and issue a certificate to that effect. 
(2) A patent shall not be granted under this section unless the filing fee and advertisement fee 
specified in section 23 and any other fees payable under the preceding provisions of this Part have been 
paid. 
(3) As soon as practicable after a standard patent has been granted under this section the Registrar 
shall-
(a) publish in the prescribed manner the specification of the patent, the names of the proprietor 
and, if different, the inventor; 
(b) send the certificate issued under subsection (1 )(b) to the proprietor; and 
( c) advertise the fact of such grant by notice in the Gazette. 
( 4) In publishing under subsection (3)(a) any matters specified in that subsection, the Registrar may 
publish in addition such other matters constituting or relating to the patent which in his opinion it is desirable 
to publish. IP/N/1/HKG/P/1 
Page 32 
'PAt:et·ff$:9JRD!N~f.:E. · · :<G~tte N®1ber: 
•·· tutt~ti pt~~~~•ilgJ)f ve:rs:ion Datt; JOtootl997 
appti~;tion r,r standard · patent' ··· ·. 
Further processing; restoration of rights 
(1) Subject to this section, where~ 
(a) an application for a standard patent, or any part of an application, is refused or is deemed 
withdrawn following the applicant1s failure to comply with a time limit under this Part 
(including any time limit set by the Registrar); and 
(b) the applicant has by notice filed with the Registrar requested reinstatement of the application 
or part of the application, 
then the legal consequence of the failure to comply with the time limit, as provided under the Ordinance, 
shall not ensue or, if it has already ensued, shall be retracted. 
(2) A notice under this section-
( a) shall be in writing and shall be filed within 2 months after such refusal or deemed 
withdrawal; 
(b) shall not be deemed to be filed unless the additional prescribed fee has been paid; and 
( c) shall not be deemed to be filed unless the omission which constituted the failure to comply 
with a time limit has been made good. 
(3) This section does not apply in the case of the refusal or deemed withdrawal of an application 
under section 15( 4), 23(5), 24(2) or 25(3). 
( 4) The Registrar may by regulation amend the period specified in subsection (2)(a) within which a 
notice under this section shall be filed. 
[cf. EPC Art. 121] C~pter:·: 
Section: 29 PATBN:tsoROINALNCE: . 
· ··Resto:r,t1on;(dghb IP/N/1/HKG/P/l 
Page 33 
· · dai~tte:Nqn(bM: 
V¢rsiota Pat¢: 30t0Ml997 
(1) Subject to this section, where-
(a) an applicant for a standard patent has failed to comply with a time limit under this Part 
(including any time limit set by the Registrar); and 
(b) the Registrar is satisfied that the failure to comply with the time limit occurred in spite of the 
applicant having taken all reasonable care required by the circumstances, 
then upon application by the applicant to the Registrar under this section for restoration of his rights lost-
(i) any refusal or deemed withdrawal of the application that occurred as a direct consequence 
of the failure to comply with the time limit shall be deemed to be of no effect and the 
application shall be treated for the purposes of proceedings under this Part as if there had 
been no such failure; 
(ii) any right or means of redress lost by the applicant as a direct consequence of the failure to 
comply with the time limit shall be restored to the applicant. 
(2) An application under this section-
(a) shall be in writing and shall be made not later than-
(i) 1 year after the expiry of the time limit referred to in subsection ( 1 )(a); or 
(ii) 2 months after the removal of the cause of non-compliance with the time limit, 
whichever is the earlier; 
(b) shall not be deemed to be filed unless the additional prescribed fee has been paid; and 
( c) shall not be deemed to be made unless the omission which constituted the failure to comply 
with a time limit has been made good. 
(3) Where prior to the refusal or deemed withdrawal of the application mentioned in subsection (l)(i) 
the request to record had been published under section 20, the Registrar shall advertise in the Gazette notice 
of any application under subsection (1 ). 
(4) The Registrar may by regulation amend the periods specified in subsection (2)(a) within which a 
notice under this section shall be filed. 
( 5) This section does not apply to any failure to comply with a time limit under section 15 ( except as 
regards any time limit specified for the purposes of section 15(3)), 17(2), 18, 19, 22, 23(5), 24(2) or 25(3). 
[ cf. EPC Art. 122] IP/N/1/HKG/P/l 
Page 34 
¢hapt~t; 
Section~ 30 . PA1~NJ'S OR{)l}.fAN:crr •. . • Qazette Nijm~ti 
· • Effect-0fresto~Jtion .~f Versfonl)at¢~ 
rights under section 29 
(1) The effect of a restoration under section 29 is as follows. 
(2) A person who, during the period between the loss of rights referred to in section 29(1) and the 
advertisement in the Gazette of notice of the application for restoration under section 29(3)-
(a) does in good faith an act which would constitute an infringement of the applicant's rights 
under the published application for a standard patent if those rights had not been lost; or 
(b) makes in good faith effective and serious preparations to do such an act, 
has the rights specified in subsection (3). 
(3) The rights referred to in subsection (2) are-
(a) the right to continue to do or, as the case may be, to do the act referred to in subsection (2); 
(b) if such act was done or preparations had been made to do it in the course of a business-
(i) in the case of an individual-
(A) the right to assign the right to do it or to transmit such right on death; or 
(B) the right to authorize the doing of that act by any of his partners for the time 
being in the business in the course of which the act was done or preparations 
had been made to do it; 
(ii) in the case of a body corporate, the right to assign the right to do it or to transmit such 
right on the body's dissolution, 
and the doing of that act by virtue of this subsection shall not amount to an infringement of the applicant's 
rights under the published application for a patent concerned. 
( 4) The rights specified in subsection (3) shall not include the right to grant a licence to any person to 
do an act referred to in subsection (2). 
(5) Where a product is disposed ofto another in exercise of a right conferred by subsection (3), that 
other and any person claiming through him may deal with the product in the same way as if it had been 
disposed of by the applicant in the patent application. 
[cf.1992No.1 s. 55(2)to(4)Eire] Chap~r: 
Soctkm: 514 
31 Titl~: IP/N/1/HKG/P/1 
Page 35 
Gai:¢tte Number~ 
Head.big~ PATENTSORDI:NA:;:~C:B 
A:mcndsnent of'app1katio:n 
for standard patent Version Dtde: 30/06/1997 
PART III 
PROVISIONS AS TO APPLICATIONS FOR 
STANDARD PATENTS BEFORE GRANT 
(1) Subject to this section and sections 36 and 103, an applicant for a standard patent may at any 
time before a standard patent is granted pursuant to the application, in accordance with the prescribed 
conditions, amend the application of his own volition. 
(2) No amendment may be made under subsection (1) to the title of the invention, the abstract, a 
priority claim or any claim, description or drawing unless-
( a) the application has been published; and 
(b) the amendment is an amendment that has been made to the corresponding designated patent 
application. 
(3) Upon receipt of particulars of an amendment filed in accordance with subsections (1) and (2) the 
Registrar shall record the amendment. IP/N/1/HKG/P/1 
Page 36 
Chapter: 
Sectfon~ 5l4 
32 Title: PA11:SNTS ORprN~~CE Gamtt<':: Number.: 
.. tfea4ing: .. Withdrawalo:fapplit$tict1t \forsionDate: S0f0§il99:7 
(I) Subject to section 36, an applicant for a standard patent may at any time before a standard patent 
is granted pursuant to the application withdraw in writing his application and any such withdrawal may not 
be revoked. 
(2) Where a patent application is withdrawn under this section, or is deemed under this Ordinance to 
have been withdrawn, or is refused under any provision of this Ordinance, then-
( a) if the application has been published, section 94(3) shall continue to apply as regards the 
application; 
(b) the applicant shall continue to enjoy the right of priority under section 98 which he enjoyed 
immediately before such withdrawal or refusal; 
( c) no other right may be claimed under this Ordinance in relation to the application Ch~pt~r: 
Sectit1n:; 
Remarks: 514 
33 1itl¢} 
H,eading: IP/N/1/HKG/P/l 
Page 37 
PATENt'S.OR:DtNANCE Gazetw N:timben 21:dfI.999 
M~iit~ in:ing :appliiatiifo:(or i~irsion .Date;· 01/01ft991: : 
standard patent 
Amendments retroactively made -see 22 of 1999 s. 3 
( 1) This section applies to an application for a standard patent which has been published but in which 
no request has been made for registration and grant under section 23. 
(2) If it is desired to maintain a patent application to which this section applies for a further year after 
the expiry of the 5th or any succeeding year from the date specified in subsection (3 ), the applicant shall, 
before the expiry of that 5th or succeeding year ( as the case may be), but not earlier than a date 3 months 
before that expiry, apply to the Registrar in the prescribed manner for the maintenance of the patent 
application (11maintenance application") and pay the prescribed fee (''maintenance fee") and a patent 
application to which this section applies shall be deemed to be withdrawn and abandoned at the expiry of 
that 5th or succeeding year if the maintenance application is not so made or the maintenance fee is not so 
paid. 
(3) The date specified for the purpose of subsection (2) is the anniversary of the date of filing the 
corresponding designated patent application first occurring after the date of publishing the request to record. 
( 4) If, within 6 months after the end of the period specified in subsection (2) for the making of a 
maintenance application, an application is made under subsection (2) and the maintenance fee and any 
prescribed additional fee are paid in the prescribed manner then the patent application shall be treated as if it 
had not been withdrawn or abandoned. 
(5) If statements contained in the maintenance application indicate-
( a) that as at a date specified in the application, being a date not earlier than 1 month before the 
date of making the application-
(i) the designated patent application has not been withdrawn or abandoned for the 
purposes of the law of the designated patent office; and 
(ii) there has been no final refusal by the designated patent office to grant a patent 
pursuant to the designated patent application; and 
(b) that-
(i) as at the date specified for the purposes of paragraph (a) a patent had not been granted 
pursuant to the designated patent application; or 
(ii) a patent has been granted pursuant to the designated patent application, and the date 
of such grant is a date within 6 months before the date of the application, 
the Registrar shall, subject to subsection (9), maintain the application for a patent. 
( 6) Where a statement contained in a maintenance application indicates that a designated patent has 
been granted on a date within the 6 months before the date of the maintenance application, any maintenance 
of the patent application by virtue of subsection ( 5) shall have effect for a term ending 6 months after the 
date of such grant. 
(7) If there are deficiencies in the maintenance application that may be corrected the Registrar shall 
give the applicant an opportunity to correct them in accordance with the rules. 
(8) If the Registrar is not satisfied as to the veracity of a statement in the maintenance application, he 
shall notify the applicant accordingly giving reasons and shall allow the applicant an opportunity to make 
further statements or adduce material for the purpose of so satisfying him. 
(9) If in an application under this section-
(a) statements contained in the application indicate that-
(i) the designated patent application has been withdrawn or abandoned pursuant to the 
law of the designated patent office; 
(ii) the designated patent office has finally refused the grant of a patent in pursuance of 
the designated patent application; or 
(iii) a designated patent has been granted in pursuance of the designated patent application, 
and the date of such grant was a date more than 6 months before the date of the IP/N/1/HKG/P/l 
Page 38 
application; 
(b) deficiencies as noted by the Registrar are not corrected in accordance with the rules; or 
( c) the applicant has failed to satisfy the Registrar as to the veracity of a statement in respect of 
which notice has been given under subsection (8), 
the Registrar shall refuse to maintain the application for a patent and upon such refusal that application shall 
be deemed to be withdrawn or abandoned. 
(10) The Registrar may by regulation amend the period specified in subsection (2) by reference to 
which the earliest date for making a maintenance application under that subsection is determined. 
( 11) The Chief Executive in Council may by regulation amend the period specified in subsection (2) as 
being the period after which a standard patent application not maintained shall be deemed to be withdrawn 
and abandoned. (Amended 22 of 1999 s. 3) 
[ cf. EPC Art. 86] Cb~pter~ 
Sectfom 34 Title: 
· :Heading~ PA1J2,Mi:SORDiNANCE 
Rest~ring .. appfi~ationfo( 
standard patent IP/N/1/HKG/P/l 
Page 39 
G~etw N\unoer: 
Version Date: 3fM06fJ991 
(1) Where an application for a standard patent is deemed withdrawn under section 33 by reason only 
of the failure to pay any maintenance fee under that section within the period specified then the applicant 
may, within 12 months after the date on which the application was deemed withdrawn and on payment of 
the prescribed fee, apply to the Registrar in the prescribed manner for the restoration of the application for a 
standard patent. 
(2) The Registrar shall advertise in the Gazette notice of any application under subsection (1 ). 
(3) If on an application under subsection (1)-
(a) the Registrar is satisfied that the failure to pay the maintenance fee within the specified 
period, or that fee and any additional fee under section 33( 4) within 6 months after the end 
of the specified period, occurred in spite of the applicant having taken all reasonable care 
required by the circumstances; and 
(b) the requirements of subsection ( 4) are met, 
the Registrar shall order that the request to record be restored on payment of any such unpaid maintenance 
fee and additional fee. 
( 4) An order for restoration shall not be made under subsection (3) unless it appears to the Registrar 
that at the date of the application for restoration-
( a) the designated patent application is still valid and not withdrawn; and 
(b) a patent has not been granted in pursuance of that application or, if granted, the time for 
filing a request for registration and grant under section 23 has not expired. 
[cf. EPC Art. 122] IP/N/1/HKG/P/1 
Page 40 
Cb{ipte~ 
Sectkm: ·;;+4 
35 ·::ritle: . 
Heading: '" .. ". -<• ••• 
Effed ~(restoration ortitr Versi(tllDate: .3(@6if991 
under section 34 
(1) The effect of a restoration under section 34(4) is as follows. 
(2) A person who, during the period between any deemed withdrawal such as is mentioned in section 
34(1) and the advertisement in the Gazette of notice of the application for restoration under section 34(2)­
(a) does in good faith an act which would constitute an infringement of the applicant's rights 
under the published application for a patent if those rights had not been lost; or 
(b) makes in good faith effective and serious preparations to do such an act, 
has the rights specified in subsection (3). 
(3) The rights referred to in subsection (2) are-
(a) the right to continue to do or, as the case may be, to do the act referred to in subsection (2); 
(b) if such act was done or preparations had been made to do it in the course of a business-
(i) in the case of an individual-
(A) the right to assign the right to do it or to transmit such right on death; or 
(B) the right to authorize the doing of that act by any of his partners for the time 
being in the business in the course of which the act was done or preparations 
had been made to do it; 
(ii) in the case of a body corporate, the right to assign the right to do it or to transmit such 
right on the body's dissolution, 
and the doing of that act by virtue of this subsection shall not amount to an infringement of the applicant's 
rights under the published application for a patent concerned. 
( 4) The rights specified in subsection (3) shall not include the right to grant a licence to any person to 
do an act referred to in subsection (2). 
(5) Where a product is disposed of to another in exercise of a right conferred by subsection (3), that 
other and any person claiming through him may deal with the product in the same way as if it had been 
disposed of by the applicant in the patent application. 
( 6) This section applies in relation to the Government use of an invention in respect of which an 
application has been made as it applies in relation to infringement of the rights conferred by publication of an 
application for a standard patent for the invention. 
[cf.1992No.1 s. 55(2)to(4)Eire] Ch~pttm 
$¢ctfon: 514 
36 J'lU¢: 
Headhlg: IP/N/1/HKG/P/1 
Page 41 
PAW$N1'S ORDfNANCE. Gazette Numoot: 
Lin¥ifad~n Off ,vithdta~'a:f; · V~rsfotrl)~te~ 30/0pJt99t 
an1e~dm~tit~ ett~ Oct 
application 
No withdrawal of an application under section 32, no request to enter a record of a divisional 
application under section 22( 1) nor any amendment under section 31 shall be allowed after the date on 
which preparations for publication under section 27(3) of the specification of a standard patent to be granted 
in pursuance of the application have been completed. IP/N/1/HKG/P/1 
Page 42 
Chapter: 
Section: 5l4:: 
37 Ti:t1¢: 
Heading;. PATENTS ORDENA.NCE 
·•. R~istra.r ut;y r:efns'':to, 
r~~rd un.d~r $f~t\01t Z(l~T· 
· to r~i}t,t and <grn.~t n:nder 
· section 27 · (fatett¢<Number: 
V~rsion Oate,: 
(1) The Registrar may refuse to record a designated patent application under section 20(1) or to 
register a designated patent under section 27 if he considers that the invention the subject of the application 
for the standard patent is not a patentable invention by reason of any of the matters specified in section 
93(5). 
(2) The Registrar shall give notice in writing to the applicant of any such refusal. Qh~pter: 
s~ytfon; 514 
38 'Tide~ · 
Heading: Deem~~ d:1te offi.Hni whcere. Version Date:. 
stand;trd pateijthas b~n 
granted 
PARTIV 
PROVISIONS AS TO PA TENTS AFTER GRANT 
Standard patents IP/N/1/HKG/P/l 
Page 43 
Where a standard patent is granted, the application for the standard patent shall be deemed to have as 
its date of filing the date of filing of the corresponding designated patent application, and in this Ordinance 
"deemed date of filing" in relation to an application for a standard patent shall be 
construed accordingly. IP/N/1/HKG/P/l 
Page 44 
Cl)AJ>:teti 
Se<.:tion::: 
Remarks: 514 
$9. Title: 
Heading: PAT.f:NTSORDfNANCE 
T~r:r:n ofstimdar4>paten:t G~tte Number~ 22 .tif 1999 
Version Date: (H /07/1997 
Amendments retroactively made -see 22 of 1999 s. 3 
( 1) A standard patent granted under this Ordinance-
( a) shall take effect from the date on which the fact of its grant is advertised in the Gazette; and 
(b) subject to subsection (2), shall remain in force until the end of the period of 20 years 
beginning with the deemed date of filing of the application for the patent 
(2) If it is desired to keep a standard patent in force for a further year after the expiry of the ·3rd or 
any succeeding year from the date specified in subsection (3), the prescribed renewal fee shall be paid 
before the expiry of that 3rd or, as the case may be, succeeding year, but not earlier than a date 3 months 
before that expiry, and a standard patent shall cease to have effect at the expiry of that 3rd or succeeding 
year if the renewal fee is not so paid. 
(3) The date specified for the purpose of subsection (2) is the anniversary of the deemed date of 
filing of the standard patent first occurring after the date of grant of the patent. 
( 4) If within 6 months after the end of the period specified in subsection (2) for payment of the 
renewal fee the renewal fee and any prescribed additional fee are paid, the standard patent shall be treated 
as if it had never expired, and accordingly-
(a) anything done under or in relation to it during that further period shall be valid; 
(b) an act which would constitute an infringement of it if it had not expired shall constitute such 
an infringement; and 
( c) an act which would constitute Government use of the patented invention if the patent had 
not expired shall constitute that use. 
(5) The Registrar may by regulation amend the period specified in subsection (2) by reference to 
which the earliest date for payment of the prescribed renewal fee is determined. 
(6) The Chief Executive in Council may by regulation amend- (Amended 22 of 1999 s. 3) 
(a) the period specified in subsection (l)(b) as being the period for which a standard patent shall 
remain in force; 
(b) the period specified in subsection (2) by reference to which a standard patent, if not 
renewed, shall cease to have effect. 
[cf. 1977 c. 37 s. 25 U.K.] !Jfmpter: 
Section~ 40 Tide~> 
•He.aq{ng: PATENTSORDfNAN'CE .. ,,, ._ . -,,,.' 
. R.e$JOratioltJ>fl3psed· 
standard patents IP/N/1/HKG/P/1 
Page 45 
G~t;¢Num~r: 
• \forsfon Oate: 310/06.f:1997: .. 
( 1) Where a standard patent has ceased to have effect by reason of the failure to pay any renewal 
fee as provided in section 39, application may be made to the Registrar, at any time within 18 months after 
the date on which the patent ceased to have effect, for the restoration of the patent. 
(2) An application under this section may be made by the person who was the proprietor of the 
standard patent at the time it ceased to have effect or by any other person who would have been entitled to 
the patent if it had not ceased to have effect; and where the patent was at that time held by 2 or more 
persons jointly the application may, with the leave of the Registrar, be made by one or more of them 
without joining the others. 
(3) The Registrar shall advertise in the Gazette notice of any application under this section. 
( 4) If the Registrar is satisfied that the failure to pay any renewal fee as provided in section 39, or to 
pay that and any additional fee under that section within 6 months after the end of that period, occurred 
in spite of the applicant having taken all reasonable care required by the circumstances the Registrar shall by 
order restore the patent on payment of any such unpaid renewal fee and any prescribed additional fee. 
( 5) An order under this section may be made subject to such terms and conditions as the Registrar 
thinks fit. 
[ cf. 1949 c. 87 s. 28 U.K.; 1977 c. 37 s. 28 U.K.; EPC Art. 122] IP/N/1/HKG/P/1 
Page 46 
Chapi&t 
Section: ·5T4: 
41 . Title: 
H~ing:. .PA!ENTSORotNANCE 
.· Eff~tt:Pf ordet to{ 
resturJtion.:otsfa:n.dar:d• ,',".-·,·>: 
patent fr,azetti N.ijn,iher: · 
Vets ion Date: 30/06/1991: 
(1) The effect of an order for the restoration of a standard patent is as follows. 
(2) Anything done during the period between expiry and restoration which would have constituted an 
infringement if the patent had not expired shall be treated as an infringement-
( a) if done at a time when it was possible for the patent to be renewed under section 39(4); or 
(b) if it was a continuation or repetition of an earlier infringing act. 
(3) A person who in Hong Kong, after it was no longer possible for the patent to be so renewed and 
before advertisement in the Gazette of notice of an application for restoration under section 40-
( a) began in good faith to do an act which would constitute an infringement of the patent if it 
were in force; or 
(b) made in good faith effective and serious preparations to do such an act, 
has the rights specified in subsection ( 4 ). 
(4) The rights referred to in subsection (3) are-
(a) the right to continue to do or, as the case may be, to do the act referred to in subsection (3); 
(b) if such act was done or preparations had been made to do it in the course of a business-
(i) in the case of an individual-
(A) the right to assign the right to do it or to transmit such right on death; or 
(B) the right to authorize the doing of that act by any of his partners for the time 
being in the business in the course of which the act was done or preparations 
had been made to do it; 
(ii) in the case of a body corporate, the right to assign the right to do it or to transmit such 
right on the body's dissolution, 
and the doing of that act by virtue of this subsection shall not amount to an infringement of the patent 
concerned. 
(5) The rights specified in subsection (4) shall not include the right to grant a licence to any person to 
do an act referred to in subsection (3). 
( 6) Where a patented product is disposed of to another in exercise of a right conferred by subsection 
( 4), that other and any person claiming through him may deal with the product in the same way as if it had 
been disposed of by a registered proprietor of the patent. 
[cf.1992No. ls. 55(2)to(5)Eire] Chapter: 
Septkin; 514 
42 Title; 
·H~ing: Qe~trmJn,tion. a,fter.gtant·.·. Version. Datt~. 
(1fq1Je$:tjqn~ r:-eferr~ btfar:e < 
grant IP/N/1/HKG/P/1 
Page 47 
( 1) If a question with respect to a standard patent or application for a standard patent is referred by 
any person to the Registrar or the court under section 13, whether before or after the making of an 
application for the patent, and is not determined before the time when the application is first in order for a 
grant of a patent in pursuance of the application, that fact shall not prevent the grant of a standard patent, 
but on its grant that person shall be treated as having referred to the Registrar or the court under section 55 
any question mentioned in that section which the Registrar or the court thinks appropriate. 
(2) In determining any such question under section 55 the Registrar shall exercise only the powers 
that are available to him for the purposes of determining the same question referred to him under section 13. 
[ cf. 1977 c. 37 s. 9 U.K.] IP /N/1/HKG/P /1 
Page 48 
Chapter: 
Section; 514 
4.$ Titfo: 
ffoadirig: PATEJ~T:S ORDINANCE Gw:¢tt¢ Nutrtber: 
Am.endment ohtand~rjj Version :Date: 3Q/OO,lt99:7: 
>,~dfnt ibf~owj~;:0:~p~itimi: 
o:r r~v~8:ti~~.•pr<>e~¢di~gs 
in the designated patent 
office 
( 1) If the specification of the corresponding designated patent in respect of a standard patent granted 
under Part II has (whether before or after the grant of the standard patent) been amended in the designated 
patent office following prescribed opposition or revocation proceedings, the proprietor of the standard patent 
shall file with the Registrar in the prescribed manner and within the prescribed period a verified copy of the 
amended specification or the amending order or other prescribed documentation. 
(2) The Registrar shall record the amendment to the specification of the designated patent by making 
an appropriate entry in the register and upon that recording the standard patent shall be treated as having 
been amended in a like manner. 
(3) As soon as practicable after a standard patent has been amended under this section the Registrar 
shall-
(a) publish the amendment; 
(b) advertise the fact of the amendment by notice in the Gazette. 
( 4) Any amendment of the specification of a standard patent under this section shall have effect from 
the date of grant of the patent. 
( 5) Any amendment of the specification of a standard patent under this section shall have effect 
subject to section 103. 
[ cf. EPC Art. 102] Chapter: 
Secti-0n~ :S:J4 
44 Ude: 
Heading: IP/N/1/HKG/P/l 
Page 49 
f:tATENTSOl{DlNANCE G~t~ Number: 
· Re~<~tfott4lf $faild~td Version Date~ 
.. ;;;i:r;r~n::t·•··· 
··iu:0·tbe•.designaten:·•patent 
office 
(1) This section applies to any standard patent of which the corresponding designated patent has 
been revoked following prescribed opposition or revocation proceedings in the designated patent office. 
(2) The proprietor of a patent to which this section applies shall after publication of the revocation by 
the designated patent office and in the prescribed manner fi]e with the Registrar a verified copy of the order 
of revocation or other prescribed documentation. 
(3) The Registrar shall record any filing under subsection (2) and shall advertise the fact of such 
filing by notice in the Gazette. 
( 4) A person other than the proprietor of a patent to which this section applies may apply to the 
Registrar in the prescribed manner for an order under this subsection, and where on such an application the 
Registrar is satisfied that the patent is one to which this section applies he shall, subject to subsection (5), 
order that the patent be revoked. 
(5) The Registrar may, if he thinks fit, refer any application under subsection (4) to the court and the 
court shall have jurisdiction to make an order for the revocation of the patent. 
( 6) Upon the Registrar advertising the fact of a filing by the proprietor of a patent under subsection 
(2) in the Gazette, or upon the making of an order by the Registrar under subsection ( 4) or by the court 
under subsection ( 5) for the revocation of a patent, the patent shall be treated as never having had effect. 
[cf EPC Art. 102] IP/N/1/HKG/P/1 
Page 50 
Chapter~ 
Section; S:14 
45 Title: 
Head:ing~ PATEN'f&:ORDtNANC:1$ . 
M~ntJ0:~ oflijverit();r. . 
Patents generally O~tt~Nµmh~r:: 
VersiooJ)ate: 
( 1) The inventor or joint inventors of an invention shall have a right to be mentioned as such in any 
patent granted for the invention. 
(2) Where a person has been mentioned in a patent as sole or joint inventor in pursuance of this 
section, any other person who alleges that the former ought not to have been so mentioned may at any time 
after the grant of the patent request the Registrar to make a finding to that effect; and if the Registrar makes 
such a finding he shall accordingly amend the register and any undistributed copies of the patent, and may 
issue a certificate to the effect of his finding. 
[cf. 1977 c. 37 s. 13 U.K.; 1992 No. 1 s. 17 Eire] Cf:\a_pttr;-· 
Section: ·.$14 
46 Tide::. 
fleaafott~ . '.· . -. .::._,.. . ---., 
Generatpo\\~er tQ<amend 
specification after grant IP/N/1/HKG/P/1 
Page 51 
~Qa.zette:Nµmben 
··· .. Version Date: . :30fQ6/l997 . · 
(1) Subject to section 103, the proprietor of a patent granted under this Ordinance may apply to the 
court to amend the specification of the patent and the court may by order allow any such amendment 
subject to such conditions as it thinks fit. 
(2) No such amendment shall be allowed if there are pending before the court proceedings in which 
the validity of the patent may be put in issue. 
(3) An amendment of a specification of a patent under this section shall have effect and be deemed 
always to have had effect as from the grant of the patent. 
( 4) Any person wishing to oppose an application under this section may, in accordance with rules of 
court, give to the court notice of opposition; and the court shall consider the opposition in deciding whether 
to grant the application. 
(5) Upon receipt of the court order and supporting documents filed in the prescribed manner the 
Registrar shall record the amendments to the specification of the patent and shall publish this and advertise 
the fact by notice in the Gazette. 
(6) The Registrar may, without any application being made to the court or to him for the purpose, 
amend the specification of a patent so as to acknowledge a registered trade mark 
(7) Rules of court may provide for the notification of any application under this section to the 
Registrar and for his appearance on the application and for giving effect to any order of the court on the 
application. 
[cf. 1977 c. 37 s. 27 U.K.] IP/N/1/HKG/P/1 
Page 52 
Chapter. 
Section; 514 
47 Titre~ 
Heading~ PATENTS ORDINANCE 
Patent··n():t t~• btlntpugned Ve-rsfon.·.Oat-e~ 
for lack of unity 30i06/t9<J7 
No person may in any proceedings object to a patent or to an amendment of a specification of a 
patent on the ground that the claims contained in the specification of the patent, as they stand or, as the case 
may be, as proposed to be amended, relate-
(a) to more than one invention; or 
(b) to a group of inventions which are not so linked as to form a single inventive concept. 
[cf. 1977 c. 37 s. 26 U.K.] Gh~ter: .· 
S~tion; :fi:4 
48<. Tide: 
Heru:ifog~ PATBNTS·QRDINANCH 
··Setrendet cd'p•i~rlts IP/N/1/HKG/P/1 
Page 53 
Gazette Nmnber; 
Versfont)ate; . 3Q!:06/H1:97 
(1) The proprietor of a patent may at any time by written notice given to the Registrar offer to 
surrender his patent. 
(2) Any person may give notice to the Registrar of his opposition to the surrender of a patent under 
this section, and if he does so the Registrar shall notify the proprietor of the patent and, subject to 
subsection ( 4 ), shall determine the question. 
(3) If the Registrar is satisfied that the patent may properly be surrendered he may accept the offer 
and, as from the date on which notice of his acceptance is advertised in the Gazette, the patent shall cease 
to have effect, but no action for infringement shall lie in respect of any act done before that date and no 
right to compensation shall accrue for any Government use of the patented invention before that date. 
( 4) The Registrar may if he thinks fit refer the matter to the court for determination. 
[cf. 1977 c. 37 s. 29 U.K.] IP/N/1/HKG/P/l 
Page 54 
PA'TENtS ORDINANCE ·. Gazette Numbee 
·#~jstra•r:1sipol!~r••tti•:;~~;~e••••v~rsipn .. Da;,: 
patent on gr~iJXJd$: .of t'9td:re . . 
publkst or nforanty 3:0/06/1997: • •.· · 
( l) Any person may at any time after a patent has been granted for an invention under this 
Ordinance refer to the Registrar the question of whether, having regard to any of the matters specified in 
section 93( 5), the invention is a patentable invention. 
(2) Where a question is so referred-
(a) subject to paragraph (b), the Registrar shall determine the question; 
(b) the Registrar may if he thinks fit refer the question to be determined by the court and, 
without prejudice to the court's jurisdiction apart from this paragraph to determine any such 
question, the court shall have jurisdiction to do so. 
(3) If the Registrar or the court determines that the invention is not a patentable invention by reason 
of any of the matters specified in section 93(5) he or it shall order that the patent shall be revoked and upon 
the making of such an order the patent shall be treated as never having had effect. 
( 4) Any person may oppose a reference under subsection (2). Ch$pte;r~ . 
Sedi~t $14 
50 .Title: 
He@ihgf··. IP /N/l/HKG/P/1 
Page 55 
RATEJffSOROINANCtf ... < G~tt¢Nµ«tber: 
Nature :ot\ and #3;$a;tft)JJ.$ Versfon Piter JQi06il997 · 
· in} patt:lnts alld.4pp.tkanon$ · 
for patents 
PARTV 
PROPERTY IN PATENTS AND APPLICATIONS; REGISTRATION 
(1) Any patent or application for a patent is personal property (without being a thing in action), and 
any patent or any such application and rights in or under it may be transferred, created or granted in 
accordance with subsections (2) to (7). 
(2) Subject to section 54, any patent or any such application, or any right in it, may be assigned or 
mortgaged. 
(3) Any patent or any such application or right shall vest by operation of law in the same way as any 
other personal property and may be vested by an assent of personal representatives. 
( 4) Subject to section 54, a licence may be granted under any patent or any such application for 
working the invention which is the subject of the patent or the application; and-
( a) to the extent that the licence so provides, a sub-licence may be granted under any such 
licence and any such licence or sub-licence may be assigned or mortgaged; and 
(b) any such licence or sub-licence shall vest by operation of law in the same way as any other 
personal property and may be vested by an assent of personal representatives. 
(5) Subsections (2) to (4) shall have effect subject to this Ordinance. 
(6) Any of the following transactions, that is to say-
(a) any assignment or mortgage of a patent or any such application, or any right in a patent or 
any such application; 
(b) any assent relating to any patent or any such application or right, 
shall be void unless it is in writing and is signed by or on behalf of the assignor, mortgagor or party granting 
such assent as the case may be ( or, in the case of an assent or other transaction by a personal 
representative, by or on behalf of the personal representative) or in the case of a body corporate is so signed 
or is under the seal of that body. 
(7) An assignment of a patent or any such application or a share in it, and an exclusive licence 
granted under any patent or any such application, may confer on the assignee or licensee the right of the 
assignor or licensor to bring proceedings by virtue of section 80 or 88 for a previous infringement or to bring 
proceedings under section 72 for a previous act. 
[cf. 1977 c. 37 s. 30 U.K.] IP/N/1/HKG/P/l 
Page 56 
Section: 51 Heading: Register of patents G<tiette Nutnberi L.N+:96 of 
1999,: 
Version Date: 01/06/1999 
( 1) The Registrar shall keep a register to be known as the register of patents, which shall comply 
with rules made for the purposes of this section and shall be kept in accordance with such rules. 
(2) Without prejudice to any other provision of this Ordinance-
(a) rules shall be made providing for the registration of-
(i) patents and of published applications for standard patents; and 
(ii) transactions, instruments or events affecting rights in or under patents and published 
applications for standard patents; 
(b) rules made for the purposes of this section may provide, in connection with rules made for 
the purposes of paragraph (a), for-
(i) the furnishing to the Registrar of any prescribed documents or description of 
documents in connection with any matter which is required to be registered; 
(ii) the correction of errors in the register and in any documents filed with the Registrar in 
connection with registration; and 
(iii) the publication and advertisement of anything done under this Ordinance in relation to 
the register; and 
( c) rules made for the purposes of this section may provide for notification to the Registrar of 
any matter affecting the property in an application for a patent. 
(3) Notwithstanding subsection (2)(a)(ii), no notice of any trust, whether express, implied or 
constructive, shall be entered in the register and the Registrar shall not be affected by any such notice. 
( 4) The register need not be kept in documentary form. 
(5) Subject to any rules, the public shall have a right to inspect the register at the registry at all 
convenient times. 
( 6) Any person who applies for a certified copy of an entry in the register or a certified extract from 
the register shall be entitled to obtain such a copy or extract on payment of a fee prescribed in relation to 
certified copies and extracts; and rules may provide that any person who applies for an uncertified copy or 
extract shall be entitled to such a copy or extract on payment of a fee prescribed in relation to uncertified 
copies and extracts. 
(7) Applications under subsection (6) or rules made by virtue of that subsection shall be made in 
such manner as may be prescribed. 
(8) In relation to any portion of the register kept otherwise than in documentary form-
(a) the right of inspection conferred by subsection (5) is a right to inspect the material on the 
register; and 
(b) the right to a copy or extract conferred by subsection ( 6) or rules is a right to a copy or 
extract in a form in which it can be taken away and in which it is visible and legible. 
(9) Subject to subsection (12), the register shall be prima facie evidence of anything required or 
authorized by this Ordinance to be registered. 
(10) A certificate purporting to be signed by the Registrar and certifying that any entry which he is 
authorized by this Ordinance to make has or has not been made, or that any other thing which he is so 
authorized to do has or has not been done, shall be prima facie evidence of the matters so certified. 
(11) Each of the following, that is to say-
(a) a copy of an entry in the register or an extract from the register which is supplied under 
subsection (6); 
(b) a copy of any document kept at the registry or an extract from any such document, any 
specification of a patent or any application for a standard patent which has been published, 
which purports to be a certified copy or a certified extract shall, subject to subsection (12), be admitted in 
evidence without further proof and without production of any original. 
(12) This section is without prejudice to section 22A or 22B or Part IV of the Evidence Ordinance 
(Cap 8) or any provision made by virtue of that section or Part. (Replaced 2 of 1999 s. 6) 
(13) In this section "certified copy" and "certified extract" mean a copy and extract certified by the Registrar and sealed with the seal of the Registrar. IP/N/1/HKG/P/l 
Page 57 
[cf. 1977 c. 37 s. 32 U.K.] IP/N/1/HKG/P/1 
Page 58 
Ch.~~tt:. 
Secti¢m:• 514 
52 Titler: 
H¢a4:ii)i:· .•PATENTSORtirN.&~cE·· 
· trt,d· otregjs~111~,< ..... 
pt~Cfflilt".~ Oltig~Wi~ .. 
pulertts G~tte Numb¢r: 
V:etsi-01l ~te~ $-0!06{1991: 
( 1) Any person who claims to have acquired the property in a patent or application for a patent by 
virtue of any transaction, instrument or event to which this section applies shall be entitled as against any 
other person who claims to have acquired that property by virtue of an earlier transaction, instrument or 
event to which this section applies if, at the time of the later transaction, instrument or event-
( a) either-
(i) application has not been made for registration of the earlier transaction, instrument or 
event; or 
(ii) in the case of any application for a standard patent which has not been published or 
any application for a short-term patent, notice of the earlier transaction, instrument or 
event has not been given to the Registrar in accordance with rules (if any) made for 
the purposes of section 51 (2 )( c ); and 
(b) the person claiming under the later transaction, instrument or event did not know of the 
earlier transaction, instrument or event. 
(2) Subsection (1) shall apply equally to the case where any person claims to have acquired any right 
in or under a patent or application for a patent by virtue of a transaction, instrument or event to which this 
section applies, and that right is incompatible with any such right acquired by virtue of an earlier transaction, 
instrument or event to which this section applies. 
(3) This section applies to the following transactions, instruments and events­
( a) the assignment of a patent or application for a patent, or a right in it; 
(b) the mortgage of a patent or application or the granting of security over it; 
(c) the grant or assignment of a licence or sub-licence or mortgage of a licence or sub-licence 
under a patent or application; 
( d) the death of the proprietor or one of the proprietors of any such patent or application or any 
person having a right in or under a patent or application and the vesting by an assent of 
personal representatives of a patent, application or any such right; and 
( e) any order or directions of a court or other competent authority transferring a patent or 
application or any right in or under it to any person and the event by virtue of which the 
court or authority had power to make any such order or give any such directions. 
[cf. 1977 c. 37 s. 33 U.K.] Chapret: 
Seetion; 514 
53 · tHfo: 
Heading: Version Date: IP/N/1/HKG/P/l 
Page 59 
(1) The court may, on the application of any person aggrieved, order the register to be rectified by 
the making, or the variation or deletion, of any entry in it. 
(2) In proceedings under this section the court may determine any question which it may be necessary 
or expedient to decide in connection with the rectification of the register. 
[cf. 1977 c. 37 s. 34 U.K.] IP/N/1/HKG/P/l 
Page 60 
Chapter; 
Section: Ti\1¢: . 
·a~hii. • .. · ...... ·······. 
· Co~owners&ip of1ta;tents 
and applications for patents O.ai¢1f¢:Numb¢r~ 
VersfonD~te: 30/06{1997 : .. 
( 1) Where a patent is granted to 2 or more persons each of them shall, subject to any agreement to 
the contrary, be entitled to an equal undivided share in the patent. 
(2) Where 2 or more persons are proprietors of a patent, then, subject to this section and to any 
agreement to the contrary, each of them shall be entitled, by himself or his agent, to do in respect of the 
invention concerned, for his own benefit and without the consent of or the need to account to the other or 
others, any act which would apart from this subsection and sections 68 and 69 amount to an infringement of 
the patent concerned; and any such act shall not amount to an infringement of the patent concerned. 
(3) Subject to sections 13 and 55 and to any agreement for the time being in force, where 2 or more 
persons are proprietors of a patent one of them shall not without the consent of the other or others grant a 
licence under the patent or assign or mortgage a share in the patent. 
(4) Subject to those sections, where 2 or more persons are proprietors of a patent, anyone else may 
supply one of those persons with the means, relating to an essential element of the invention, for putting the 
invention into effect, and the supply of those means by virtue of this subsection shall not amount to an 
infringement of the patent. 
( 5) Where a patented product is disposed of by any of 2 or more proprietors to any person, that 
person and any other person claiming through him shall be entitled to deal with the product in the same way 
as if it had been disposed of by a sole registered proprietor. 
(6) Nothing in subsection (1) or (2) shall affect the mutual rights or obligations of trustees or of the 
personal representatives of a deceased person, or their rights or obligations as such. 
(7) This section shall have effect in relation to an application for a patent as filed as it has effect in 
relation to a patent and-
( a) references to a patent and a patent being granted shall accordingly include references 
respectively to any such application and to the application being filed; and 
(b) the reference in subsection ( 5) to a patented product shall be construed accordingly. 
[cf. 1977 c. 37 s. 36 U.K.; EPC Art. 59] Chapter: 
Section; 514 
63 Title~ 
Heading~ PATE:NTS ORDrNANCE. 
Oetermin~tion o(p.arts of Verskm/Oate: 
certain contracts 
( 1) This section applies to-
( a) any contract for the supply of a patented product; 
(b) any licence to work a patented invention; or 
( c) any contract relating to any such supply or licence, IP/N/1/HKG/P/l 
Page 71 
where the patent or all the patents by which the product or invention was protected at the time of the 
making of the contract or granting of the licence has or have ceased to be in force. 
(2) Notwithstanding anything to the contrary in the contract or licence or in any other contract, a 
contract or licence to which this section applies may to the extent (and only to the extent) that the contract 
or licence relates to the product or invention, be determined by either party on giving 3 months' notice in 
writing to the other party. 
(3) In subsection (1) 11patented product" and "patented invention" 
include respectively a product and an invention which is the subject of an application for a patent, and that 
subsection shall apply in relation to a patent by which any such product or invention was protected and 
which was granted after the time of the making of the contract or granting of the licence in question, on an 
application for a patent which had been filed before that time, as it applies to a patent in force at that time. 
( 4) If, on an application under this subsection made by either party to a contract or licence falling 
within subsection ( 1 ), the court is satisfied that, in consequence of the patent or patents concerned ceasing 
to be in force, it would be unjust to require the applicant to continue to comply with all terms and conditions 
of the contract or licence, it may make such order varying those terms or conditions as, having regard to all 
the circumstances of the case, it thinks just as between the parties. 
( 5) The foregoing provisions of this section apply to contracts and licences whether made before or 
after the commencement of this section. 
(6) The provisions of this section shall be without prejudice to any rule of law relating to the 
frustration of contracts and any right of determining a contract or licence exercisable apart from this section. 
[cf. 1977 c. 37 s. 45 U.K.] IP/N/1/HKG/P/l 
Page 72 
Cb~ter: 
Section: 514 ,4 Title: 
Heading: PNrENTSORDJNANCE · 
Cotnptdsoey ncen~esfor 
standard patents 
PART VIII O~~~Number: 
Versfon. Date~ 3.i)/06! 1997 
COMPULSORY LICENCES FOR STANDARD PATENTS 
( 1) At any time after the expiration of 3 years from the date of grant of a standard patent any person 
may apply to the court on one or more of the grounds specified in subsection (2)-
( a) for a licence under the patent; 
(b) where the applicant is the Government, for the grant of a licence under the patent to any 
person specified in the application. 
(2) The grounds referred to in subsection (1) are-
(a) where the patented invention is capable of being commercially worked in Hong Kong, that it 
is not being so worked or is not being so worked to the fullest extent that is reasonably 
practicable; 
(b) where the patented invention is a product, that a demand for the product in Hong Kong is 
not being met on reasonable terms; 
( c) where the patented invention is capable of being commercially worked in Hong Kong by 
manufacture, that it is being prevented or hindered from being so worked-
(i) in the case of a product, by the importation of the product; or 
(ii) in the case of a process, by the importation of a product obtained directly by means of 
the process or to which the process has been applied; 
( d) that by reason of the refusal by the proprietor of the patent to grant a 1 icence or licences on 
reasonable terms-
(i) the working or efficient working in Hong Kong of any other patented invention which 
involves an important technical advance of considerable economic significance in 
relation to the patent is prevented or hindered; or 
(ii) the establishment or development of commercial or industrial activities in Hong Kong 
is unfairly prejudiced; or 
( e) that by reason of conditions imposed by the proprietor of the patent on the grant of licences 
under the patent, or on the disposal or use of the patented product or on the use of the 
patented process, the manufacture, use or disposal of materials not protected by the patent 
or the establishment or development of commercial or industrial activities in Hong Kong, is 
unfairly prejudiced. 
(3) The court may, if it is satisfied that any of those grounds are established, and subject to 
subsections ( 4) and (5), order the grant of a licence on such terms as it thinks fit-
(a) to the applicant, where the application is made under subsection (l)(a); or 
(b) to the person specified in the application, where the application is made under subsection 
(1 )(b ). 
( 4) Where the application is made on the ground that the patented invention is not being 
commercially worked in Hong Kong or is not being so worked to the fullest extent that is reasonably 
practicable, and it appears to the court that the time which has elapsed since the grant of the patent was 
advertised in the Gazette has for any reason been insufficient to enable the invention to be so worked, the 
court may adjourn the hearing for such period as will in the opinion of the court give sufficient time for the 
invention to be so worked. 
(5) No order shall be made under this section unless the court is satisfied that the applicant has made 
reasonable efforts to obtain authorization from the proprietor on reasonable commercial terms and 
conditions and that such efforts have not been successful within a reasonable period of time. 
(6) No order shall be made under this section in respect of a patent ("patent A") on the ground 
mentioned in subsection (2)( d)(i) unless the court is satisfied that the proprietor of the patent for the other 
invention ('1patent B11
) is able and willing to grant to the proprietor of patent A and his licensees a licence under patent B on reasonable terms. 
(7) An order granting a licence under this section shall provide­
( a) that the licence shall be non-exclusive; and IP /N/1/HKG/P/l 
Page 73 
(b) that such licence shall be non-assignable except with that part of the enterprise or goodwill 
which enjoys the use of the patent under the licence, and in the case of a licence granted 
under subsection ( 6) the licence in respect of patent A shall only be assignable with the 
assignment of the licence on patent B, 
and shall specify the scope and duration of such licence. 
(8) An application may be made under this section in respect of a patent notwithstanding that the 
applicant is already the holder of a licence under the patent; and no person shall be estopped from relying on 
any of the matters specified in subsection (2) because of any admission made by him, whether in such 
licence or otherwise or by reason of his having accepted such licence. 
[cf. 1977 c. 37 s. 48 U.K.] IP/N/1/HKG/P/1 
Page 74 
CiiaP*~fr 
$ect1on:. Title; 
Heading:; ·-··.· .. ·.-. ,' - ' , .... _. '''·:<. 
P:roviSi() .. S al:f()Utlicen,ces . Version bate:· 
under section 64 . 30/06/1997 
(1) Where the court is satisfied, on an application made under section 64 in respect of a patent, that 
the manufacture, use or disposal of materials not protected by the patent is unfairly prejudiced by reason of 
conditions imposed by the proprietor of the patent on the grant of licences under the patent, or on the 
disposal or use of the patented product or the use of the patented process, the court may ( subject to the 
provisions of that section) order the grant of licences under the patent to such customers of the applicant as 
it thinks fit as well as to the applicant. 
(2) Where an application under section 64 is made in respect of a patent by a person who holds a 
licence under the patent, the court may-
(a) if it orders the grant of a licence to the applicant, order the existing licence to be cancelled; 
or 
(b) instead of ordering the grant of a licence to the applicant, order the existing licence to be 
amended. 
[cf. 1977 c. 37 s. 49 U.K.] Ch~pt:e:r: 
Sectipn:. PATBNTS•ORDfNA:NCE 
<Ei~rdsJ-or~~wers Ott .. _ ... 
·appJiatinni nn4e-r>s~ctj():n 64 . ,. ''. ,_·, ,·.' 
· V¢r$i;i1 Oat¢~ IP /N/1/HKG/P/l 
Page 75 
(1) The powers of the court on an application under section 64 in respect of a patent shall be 
exercised with a view to securing the following purposes-
(a) that inventions which can be worked on a commercial scale in Hong Kong and which should 
in the public interest be so worked shall be worked there without undue delay and to the 
fullest extent that is reasonably practicable; 
(b) that the inventor or other person beneficially entitled to a patent shall receive reasonable 
remuneration having regard to the nature of the invention; 
( c) that the interests of any person for the time being working or developing an invention in 
Hong Kong under the protection of a patent shall not be unfairly prejudiced. 
(2) Subject to subsection (1), the court shall, in determining whether to make an order in pursuance 
of such an application, take account of the following matters-
( a) the nature of the invention, the time which has elapsed since the grant of the patent was 
advertised in the Gazette and the measures already taken by the proprietor of the patent or 
any licensee to make full use of the invention; 
(b) the ability of any person to whom a licence would be granted by the court to work the 
invention to the public advantage; 
( c) the risks to be undertaken by that person in providing capital and working the invention if 
the application for an order is granted, 
but the court shall not be required to take account of any such matter occuring subsequent to the making of 
the application. 
(3) Any person aggrieved by an order made under section 64 or 65 may apply to the court for an 
order for the variation or cancellation of the licence if the court in all the circumstances should think fit. 
[cf. 1977 c. 37 s. 50 U.K.] IP/N/1/HKG/P/l 
Page 76 
Chapter~ 514 
~tior:fr··· .· ... 67 . ' . ' ' . . ' . -. 
:Heading; 
Expanded Cross Reference: 
64,65,66 . · .. lM .. TEtffS.:OROINANCE. ·· 0.-~tte; Nµfo1'et: · •. 
. 0f)p()Sitiijrltn •PPlicittior{ ... V~skmDater . rm/06/1997 
under sections 64 to 66 
The proprietor of the patent concerned or any other person wishing to oppose an application under 
sections 64 to 66 may, in accordance with rules of court, give to the court notice of opposition; and the 
court shall consider the opposition in deciding whether to grant the application. <* Note-Exp. x-Ref: 
Sections 64, 65, 66 *> 
[cf. 1977 c. 37 s. 52 U.K.] Chapter!. 
&ectipn;· Sf4. 
68 Tidet· 
He&iing: 
Expanded Cross Reference: 
69, 70, 71 
Remarks: ' .·,,· . -. ,., 
:Oeclarad()n•• ot extr.eme 
urgency 
Amendments retroactively made -see 22 of 1999 s. 3 
PARTIX :V ersfotl Pate; IP/N/1/HKG/P/1 
Page 77 
01!07/1997 
GOVERNMENT USE OF PATENTED INVENTIONS 
The Chief Executive in Council may, for the purposes of applying sections 69 to 71, by regulation 
declare a period of extreme urgency whenever Chief Executive in Council considers it to be necessary or 
expedient in the public interest for the maintenance of supplies and services essential to the life of the 
community or for securing sufficient supplies and services essential to the life of the community. <* Note -
Exp. X-Ref.: Sections 69, 70, 71 *> 
(Amended 22 of 1999 s. 3) IP/N/1/HKG/P/l 
Page 78 
C~pter; 
Section; 514 
69 ·Title: 
~eadh'sg: · uazt!tte.N\lll1ber: 22-<ifl999 
Qo.vernm,tnt Q5~·•qf pat¢nt$ Version-Oat~~ 
.ql:Jrirlg a ptdod ofiitreme 
ttrgency (H/07 I 199'7: 
Expanded Cross Reference: 
70, 71, 72 
Remarks: 
Amendments retroactively made -see 22 of 1999 s. 3 
(1) During a period of declared extreme urgency a public officer authorized in writing by the Chief 
Executive or any person authorized in writing by such public officer may in relation to-(Amended 22 of 
1999 s. 3) 
(a) a patented invention, without the consent of the proprietor of the patent; or 
(b) an invention in respect of which an application for a patent has been filed, without the 
consent of the applicant, 
do any act in Hong Kong in relation to the invention as appears to the public officer or person authorized to 
be necessary or expedient in connection with the urgency giving rise to the declaration under section 68. 
(2) Any act done in relation to an invention by virtue of this section is in the following provisions of 
this section referred to as use, or Government use, of the invention; and "use", in relation to an 
invention, in section 70 to 72 shall be construed accordingly. <* Note -Exp. X-Ref.: Sections 70, 71, 72 *> 
(3) Government use may include any act which would, apart from this section, amount to an 
infringement of the patent concerned or, as the case may be, give rise to a right under section 88 to bring 
proceedings in respect of the application for a standard patent. 
( 4) Any Government use of the invention made at any time either-
( a) after the publication of an application for a standard patent or the grant of a short-term 
patent for the invention; or 
(b) without prejudice to paragraph (a), in consequence of a relevant communication made 
otherwise than in confidence-
(i) after the deemed date of filing of the application for the standard patent for the 
invention or the date of filing of the application of the short-term patent for the 
invention, as the case may be; or 
(ii) where priority was claimed, after the date of priority, 
shall be made on such terms as may be agreed, either before or after the use, by the Government and the 
proprietor of the patent or as may in default of agreement be determined by the court on a reference under 
section 72. 
( 5) Where an invention is used by virtue of this section at any time after publication of an application 
for a standard patent for the invention but before such a patent is granted, and the terms for its use agreed 
or determined as mentioned in subsection ( 4) include terms as to payment for the use, then (notwithstanding 
anything in those terms) any such payment shall be recoverable only-
( a) after such a patent is granted; and 
(b) if ( apai1 from this section) the use would, if the patent had been granted on the date of the 
publication of the application, have infringed not only the patent but also the claims (as 
interpreted by the description and any drawings referred to in the description or claims) in 
the form in which they were contained in the application as published. 
( 6) The authority of a public officer in respect of an invention may be given under this section either 
before or after the patent is granted, and may be given to any person whether or not he is authorized directly 
or indirectly by the proprietor of the patent to do anything in relation to the invention. 
(7) Where any Government use of an invention is made by or with the authority of a public officer 
under this section, then the public officer shall notify the proprietor of the patent as soon as practicable, and 
furnish him with such information as to the extent of the use as he may from time to time require. 
(8) A person acquiring anything disposed of in the exercise of powers conferred by this section, and 
any person claiming through him, may deal with it in the same manner as if the patent were held on behalf of the Government. IP/N/1/HKG/P/1 
Page 79 
(9) Any reference in this section to a patented invention, in relation to any time, is a reference to an 
invention to which a patent has before that time been, or is subsequently, granted. 
(10) In this section "relevant communication", in relation to an invention, means a 
communication of the invention directly or indirectly by the proprietor of the patent or any person from 
whom he derives title. 
(11) Subsection (4) is without prejudice to any rule of law relating to the confidentiality of 
information. 
[cf. 1977 c. 37 ss. 55 & 56 U.K.] IP/N/1/HKG/P/l 
Page 80 
9Mlf>1(fr: 
S¢dion: 514 
70 <title( 
:afading~ PATENTS ORDfNANC.E 
· Rights afttlidi pa•rti~s i~: 
respect of Government use Q~ijJl~ber: 
:Version Oat~: 
(1) The provisions of any licence, assignment or agreement specified in subsection (3) are of no 
effect in relation to-
( a) any Government use of an invention by a public officer, or a person authorized by a public 
officer, by virtue of section 69; or 
(b) anything done for Government use to the order of a public officer by the proprietor of a 
patent in respect of a patented invention or by the proprietor of an application in respect of 
an invention for which an application for a patent has been filed and is still pending, 
so far as those provisions-
(i) restrict or regulate the working of the invention, or the use of any model, document or 
information relating to it; or 
(ii) provide for the making of payments in respect of, or calculated by reference to, such 
working or use. 
(2) The reproduction or publication of any model or document in connection with a working or use 
referred to in subsection (1) shall not be deemed to be an infringement of any copyright or protected 
layout-design (topography) subsisting in the model or document. 
(3) The licence, assignment or agreement referred to in subsection (1) is any licence, assignment or 
agreement which is made, whether before or after the date of commencement of this Ordinance, between 
any person who is a proprietor of or an applicant for the patent, or anyone who derives title from any such 
person or from whom such person derives title ( on the one hand), and any person whatever other than the 
Government ( on the other hand). 
( 4) Where an exclusive licence granted otherwise than for royalties or other benefits determined by 
reference to the working of the invention is in force under the patent or application concerned, then-
( a) section 69(4) applies in relation to anything done in respect of the invention which, but for 
this section and section 69( 1 ), would be an infringement of the rights of the licensee, with 
the substitution in those provisions of reference to the proprietor of the patent with reference 
to the licensee; and 
(b) section 69( 4) does not apply in relation to anything done in respect of the invention by the 
licensee by virtue of an authority given under section 69(1). 
( 5) Subject to subsection ( 4 ), where the patent, or the right to the grant of the patent, has been 
assigned to the proprietor of the patent or application in consideration of royalties or other benefits 
determined by reference to the working of the invention, then-
( a) section 69( 4) applies in relation to any Government use of the invention as if reference to 
the proprietor of the patent included a reference to the assignor, and any sum payable for 
Government use under that subsection shall be divided between those persons in such 
proportion as may be agreed on by them or as may in default of agreement be determined 
by the court on a reference under section 72; and 
(b) section 69( 4) applies in relation to any act done in respect of the invention for Government 
use by the proprietor of the patent or application to the order of a public officer, as if that 
act were use made by virtue of an authority given under that section. 
(6) Where section 69(4) applies to any use of an invention and a person holds an exclusive licence 
under the patent or application concerned (other than such a licence as is mentioned in subsection (4)) 
authorizing him to work the invention, then subsections (8) and (9) shall apply. 
(7) In subsections (8) and (9) "the section 69( 4) payment" means such 
payment (if any) as the proprietor of the patent or application and the Government agree under section 69, 
or the court determines under section 72, should be made by the public officer concerned to the proprietor 
in respect of the use of the invention. 
(8) The licensee shall be entitled to recover from the proprietor of the patent or application such part 
(if any) of the section 69( 4) payment as may be agreed on by them or as may in default of agreement be 
determined by the court under section 72 to be just having regard to any expenditure incurred by the licensee-
(a) in developing the invention; or IP/N/1/HKG/P/l 
Page 81 
(b) in making payments to the proprietor in consideration of the licence, other than royalties or 
other payments determined by reference to the use of the invention. 
(9) Any agreement by the proprietor of the patent or application and the Government under section 
69( 4) as to the amount of the section 69( 4) payment shall be of no effect unless the licensee consents to the 
agreement; and any determination by the court under section 69( 4) as to the amount of that payment shall 
be of no effect unless the licensee has been informed of the reference to the court and is given an 
opportunity to be heard. 
(10) In this section "the public officer concerned", in relation to any Government 
use of an invention, means the public officer by whom or on whose authority the use was made. 
[cf. 1977 c. 37 s. 57 U.K.] IP/N/1/HKG/P/1 
Page 82 
Chapter: 
Ser;tkm~ $14 
71 Title; 
Head:ing: PATENTS ORDf~t~NCE Gazette Number; 
(fon1pensado1ifor loss: of Version Date: 3M)6/J997 
profit 
(1) Where Government use is made of an invention, the Government shall pay­
( a) to the proprietor of the patent; or 
(b) if there is an exclusive licence in force in respect of the patent, to the exclusive licensee, 
compensation for any loss resulting from his not being awarded a contract to supply the patented product or, 
as the case may be, to perform the patented process or supply a thing made by means of the patented 
process. 
(2) Compensation is payable only to the extent that such a contract could have been fulfilled from 
the existing manufacturing or other capacity of the proprietor or licensee; but is payable notwithstanding the 
existence of circumstances rendering him ineligible for the award of such a contract. 
(3) In determining the loss, regard shall be had to the profit which would have been made on such a 
contract and to the extent to which any manufacturing or other capacity was under-used. 
( 4) No compensation is payable in respect of any failure to secure contracts to supply the patented 
product or, as the case may be, to perform the patented process or supply a thing made by means of the 
patented process, otherwise than for Government use. 
(5) The amount payable shall, if not agreed between the proprietor or licensee and the Government, 
be determined by the court on a reference under section 72, and is in addition to any amount payable under 
section 69 or 70. 
[cf. 1977 c. 37 s. 57A U.K.] Cn~pter~ 
Section: 514. 
72 · T:itte: 
Heading: PATENTS OROtNANCE Gaz.elte N:~n:nbe.r; IP /N/1/HKG/P/1 
Page 83 
Refer~~ces<ofdisputes@s ((f Ver:s.ionDate: · $0!0{,0997• 
Government use 
( 1) Any dispute as to-
( a) the exercise by a public officer, or a person authorized by a public officer, of the powers 
conferred by section 69; 
(b) terms for Government use of an invention under section 69; 
(c) the right of any person to receive any part of a payment made in pursuance of section 69(4); 
or 
(d) the right of any person to receive a payment under section 71, 
may be referred to the court by either party to the dispute after a patent has been granted for the invention. 
(2) In determining under this section any dispute between the Government and any person as to the 
terms for the Government use of an invention, the court shall have regard-
( a) to any benefit or compensation which that person or any person from whom he derives title 
may have received or may be entitled to receive directly or indirectly from any public officer 
in respect of the invention in question; 
(b) to whether that person or any person from whom he derives title has in the court's opinion 
without reasonable cause failed to comply with a request of the public officer concerned for 
Government use of the invention on reasonable terms. 
(3) On a reference under this section the court may refuse to grant relief by way of compensation in 
respect of Government use of an invention-
( a) during any further period specified under section 33(4), but before payment of the 
maintenance fee and any additional fee prescribed for the purposes of that section; or 
(b) during any further period specified under section 39(4) or 126(5) (as the case may be), but 
before the payment of the renewal fee and any additional fee prescribed for the purposes of 
that section. 
(4) Where an amendment of the specification of a patent has been allowed under this Ordinance or 
has been recorded under section 43(2), the court shall not grant relief by way of compensation under this 
section in respect of any such use before the decision to allow the amendment or the recording of the 
amendment unless the court is satisfied that the specification of the patent as published was framed in good 
faith and with reasonable skill and knowledge. 
( 5) If the validity of a patent is put in issue in proceedings under this section and it is found that the 
patent is only partially valid, the court may, subject to subsection ( 6), grant relief to the proprietor of the 
patent in respect of that part of the patent which is found to be valid and to have been used in Government 
use. 
( 6) Where in any such proceedings it is found that a patent is only partially valid, the court shall not 
grant relief by way of compensation, costs or expenses except where the proprietor of the patent proves that 
the specification of the patent was framed in good faith and with reasonable skill and knowledge, and in that 
event the court may grant relief in respect of that part of the patent which is valid and has been so used, 
subject to the discretion of the court as to costs and expenses and as to the date from which compensation 
should be awarded. 
(7) As a condition of any such relief the court may direct that the specification of the patent shall be 
amended to its satisfaction upon an application made for that purpose under section 102, and an application 
may be so made accordingly, whether or not all other issues in the proceedings have been determined. 
(8) In considering the amount of any compensation for Government use of an invention after 
publication of an application for a standard patent for the invention and before such a patent is granted, the 
court shall consider whether or not it would have been reasonable to expect, from a consideration of the 
application as published that a patent would be granted conferring on the proprietor of the patent protection 
for an act of the same description as that found to constitute that use, and if the court finds that it would not 
have been reasonable, it shall reduce the compensation to such amount as it thinks just. 
(9) Where a person becomes the proprietor or one of the proprietors or an exclusive licensee of a 
patent (the new proprietor or licensee) by virtue of a transaction, instrument or event to which section 52 IP/N/1/HKG/P/l 
Page 84 
applies, then unless-
(a) an application for registration of the prescribed particulars of the transaction, instrument or 
event is made before the end of the period of 6 months beginning with its date; or 
(b) the court is satisfied that it was not practicable for such an application to be made before the 
end of that period and that an application was made as soon as practicable thereafter, 
the new proprietor or licensee shall not be entitled to any compensation under section 69(4) (as it stands or 
as modified by section 70( 4)) or to any compensation under section 71 in respect of any use of the patented 
invention by a public officer or a person authorized by a public officer under section 69 after the date of the 
transaction, instrument or event and before the prescribed particulars of the transaction, instrument or event 
are registered. 
( 10) One of 2 or more joint proprietors of a patent or application for a patent may without the 
concurrence of the others refer a dispute to the court under this section, but shall not do so unless the others 
are made parties to the proceedings; but any of the others made a defendant shall not be liable for any costs 
or expenses unless he enters an appearance and takes part in the proceedings. 
[cf. 1977 c. 37 s. 58 U.K.] Chapter: 
Section~ $14 
73 Title~·· 
He~tding~ Prevention of:dinetus(t<of. Version Date: 
invention 
PARTX 
EFFECTS OF PATENT AND PATENT APPLICATION IP/N/1/HKG/P/1 
Page 85 
A patent while it is in force shall confer on its proprietor the right to prevent all third parties not having 
his consent from doing in Hong Kong all or any of the following-
( a) in relation to any product which is the subject-matter of the patent-
(i) making, putting on the market, using or importing the product; or 
(ii) stocking the product, whether for the purpose of putting it on the market (in Hong 
Kong or elsewhere) or otherwise; 
(b) in relation to any process which is the subject-matter of the patent-
(i) using the process; or 
(ii) offering the process for use in Hong Kong when the third party knows, or it is obvious 
to a reasonable person in the circumstances, that the use of the process is prohibited 
without the consent of the proprietor of the patent; 
( c) where the invention is a process, then in relation to any product obtained directly by means 
of that process-
(i) putting on the market, using or importing the product; or 
(ii) stocking the product, whether for the purpose of putting it on the market (in Hong 
Kong or elsewhere) or otherwise. 
[ cf. 1992 No. 1 s. 40 Eire] IP /N/1/HKG/P /1 
Page 86 
Chapt~r:~ 
Section~ 514 
74 Title: 
N~ing: Gazette Number: 
Pr~e.atio•rof indlr~ctn:se ·. Version Date: 
of invention 
(1) A patent while it is in force shall also confer on its proprietor the right to prevent all third parties 
not having his consent 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 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. 
(2) Subsection (1) shall not apply when the means referred to therein are staple commercial products, 
unless the supply or offering is made for the purpose of inducing the person supplied or, as the case may be, 
to whom the offer is made to commit acts which the proprietor of a patent is enabled to prevent by virtue of 
section 73. 
(3) Persons performing acts referred to in section 75(a), (b) or (c) shall not be considered to be 
parties entitled to work an invention pursuant to subsection (1 ). 
( 4) For the purposes of subsection (1)-
(a) reference in that subsection to a person entitled to work an invention includes a reference to 
a person so entitled by virtue of section 69; and 
(b) a person who by virtue of section 30, 35, 39(4), 41(4) or (5), 83, 106(4) or 126(5) 
(including, in the case of section 41, that section as applied by section 127) is entitled to do 
an act in relation to the invention without it constituting an infringement of a patent for the 
invention shall, so far as concerns that act, be treated as a person entitled to work the 
invention. 
[cf. 1992 No. 1 s. 41 Eirel Qh~ter;· 
Se.ction: Titl&•··• 
Hooding: ?ATWfSORDlNANCE 
tiimit1tion ofettectof 
patent Gattft~ NQmbttr: IP/N/1/HKG/P/1 
Page 87 
Version Date! 30l06ft991 ·· 
The rights conferred by a patent shall not extend to-
( a) acts done privately for non-commercial purposes; 
(b) acts done for experimental purposes relating to the subject-matter of the relevant patented 
invention; 
( c) the extemporaneous preparation for individual cases in a pharmacy of a medicine in 
accordance with a medical prescription issued by a registered medical practitioner or 
registered dentist ( which terms bear the meaning assigned to them by section 2 of the 
Medical Registration Ordinance (Cap 161) and section 2(1) of the Dentists Registration 
Ordinance (Cap 156) respectively) or acts concerning the medicine so prepared; 
(d) the use of the invention which is the subject of the patent-
(i) on board vessels registered in any of the Paris Convention countries or WTO member 
countries, territories or areas, other than Hong Kong; or 
(ii) in the body of such vessels, or in the machinery, tackle, gear or other accessories of 
such vessels, 
when such vessels temporarily or accidentally enter the territorial waters of Hong Kong, but 
only if the invention is used in such waters exclusively for the needs of the vessel; 
( e) the use of the invention which is the subject of the patent in the construction or operation 
of-
(i) aircraft, hovercraft or land vehicles of Paris Convention countries or WTO member 
countries, territories or areas, other than Hong Kong; or 
(ii) such aircraft, hovercraft or land vehicle accessories, 
when such aircraft, hovercraft or land vehicles temporarily or accidentally enter Hong Kong; 
(f) the use of an aircraft to which section 10( 4) of the Civil Aviation Ordinance (Cap 448) 
applies which has lawfully entered or is lawfully crossing Hong Kong (including the air space 
above it and its territorial waters), or the importation into Hong Kong, or the use or storage 
there, of any part or accessory for such an aircraft. 
[cf. 1992 No. 1 s. 42 Eire] IP/N/1/HKG/P/1 
Page 88 
Cru•pter: 
Section: 514 .•.. 
76 Title! 
Headi:ng: PATEN"fS ORD.lNANCB · 
Exteni Qf:bwention Oazett~ Nw:nber: 
Versipa.Dat¢1 30/'Qt.>/J997 .. 
(1) For the purposes of this Ordinance-
(a) an invention in respect of which an application for a patent has been filed shall, unless the 
context otherwise requires, be taken to be that specified in a claim of the specification of the 
application, as interpreted by the description and any drawings contained in that 
specification; 
(b) an invention for which a patent has been granted shall, unless the context otherwise requires, 
be taken to be that specified in a claim of the specification of the patent, as interpreted by 
the description and any drawings contained in that specification, 
and the extent of the protection conferred by a patent or an application for a patent shall be determined 
accordingly. 
(2) Where more than one invention is specified in any such claim in relation to a patent or an 
application for a patent, each invention may have a different date of priority for the purposes of this 
Ordinance. 
(3) Subsection (1) should not be interpreted in either of the following senses, namely-
(a) in the sense that the extent of the protection conferred by a patent is to be understood as 
that defined by the strict, literal meaning of the wording used in the claims, the description 
and drawings being employed only for the purpose of resolving an ambiguity found in the 
claims, on the one hand; or 
(b) in the sense that the claims serve only as a guideline and that the actual protection conferred 
by a patent may extend to what, from a consideration of the description and drawings by a 
person skilled in the art, the patentee has contemplated, on the other hand, 
but rather is to be interpreted as defining a position between these extremes which combines a fair 
protection for the proprietor of the patent or the application for a patent with a reasonable degree of 
certainty for third parties. 
[cf. 1977 c. 37 s. 125 U.K.J Chijf*r~ 
Sectio:11: S:t4 
77 PAT[NTSJ)RDINANCE • 
Oiscfosurf!- offo:ve=it:ti**n · IP/N/1/HKG/P/1 
Page 89 
-Gazett~N~ber: 
Vers.km D~te:. 
The application for and specification of a patent for an invention shall disclose the invention to which 
it relates in a manner sufficiently clear and complete for it to be performed by a person skilled in the art. 
[ cf. EPC Art. 83] IP IN/ 1/HKG/P /1 
Page 90 
Ch~tet:· 
Sidion: 514 
18 Tide: 
He'1ding~· PAT.BNTSORDJNA.NCE 
m11, cel3ims Gazette Number: 
VetsionDate: 3Qi:06/l997: 
The claims shall define the matter for which protection is given or sought, be clear and concise and be 
supported by the description. 
[cf. EPC Art. 84; 1992 No. 1 s. 20 Eire] Ch~pt~ 
Section: 79 Tit\~t· 
Heading; :PAT1:IN1~0ROtNANCE .. 
Theabstrad 0-aiettt ... Niunb~r: 
. . Ver:sioll l)at~; IP/N/l/HKG/P/1 
Page 91 
The abstract shall only serve for use as technical information; it may not be taken into account for any 
other purpose and in particular it may be used neither for the purpose of interpreting the scope of the 
protection given nor for the purpose of applying section 94(3 ). 
[cf. EPC Art. 85; 1992 No. l s. 22(1) Eire] IP/N/1/HKG/P/l 
Page 92 
Chapt¢t: 
Septioti~ 514 
80 Tide: 
Hooding: · PAI$:!'-~'J[S>QR:0INANCE 
Proceed bigs .for 
infringement of patent Gazette Nllmbert 
Version Date; . 3:0/06/1997 
Expanded Cross Reference: 
73, 74, 75 
PART XI 
INFRINGEMENT 
(1) Subject to this Part, civil proceedings may be brought in the court by the proprietor of a patent in 
respect of any act of infringement which he alleges he is entitled under sections 73 to 75 to prevent and 
(without prejudice to any other jurisdiction of the court) in those proceedings a claim may be made-<* 
Note-Exp. x-Ref: Sections 73, 74, 75 *> 
(a) for an injunction restraining the defendant from any apprehended act of such infringement; 
(b) for an order requiring the defendant to deliver up or destroy any patented product in relation 
to which the patent is infringed or any article in which the product is inextricably comprised; 
( c) for damages in respect of the infringement; 
( d) for an account of the profits derived by the defendant from the infringement; 
(e) for a declaration that the patent is valid and has been infringed by the defendant. 
(2) The court shall not, in respect of the same infringement, both award the proprietor of a patent 
damages and order that he shall be given an account of the profits. 
(3) Subject to this Part, in determining whether or not to grant any kind of relief claimed under this 
section and the extent of the relief granted the court shall apply the principles applied by the court in relation 
to that kind of relief immediately before the commencement of this Part. 
[cf. 1977 c. 37 s. 61 U.K; 1992 No. ls. 47 Eire] Chapter: 
Sectfo.n; . 514 · 
St Title: 
Heading: Restti(tiol'J:s-0n recovery o.:f Verskm Date: 
damages for infringement IP/N/1/HKG/P/l 
Page 93 
(1) In proceedings for the infringement of a patent damages shall not be awarded, and no order shall 
be made for an account of profits, against a defendant who proves that at the date of the infringement he 
was not aware, and had no reasonable grounds for supposing, that the patent existed. 
(2) For the purposes of subsection (1) a person shall not be taken to have been so aware or to have 
had reasonable grounds for so supposing by reason only of the application to a product of the word "patent1' 
or 11patented11
, or any word or words expressing or implying that a patent has 
been obtained for the product, unless the number of the patent accompanied the word or words in question. 
(3) In proceedings for infringement of a patent the court may, if it thinks fit, refuse to award any 
damages or make any such order in respect of an infringement committed during any further period 
specified under section 39(4) or 126(5), as the case may be, but before the payment of the renewal fee and 
any additional fee prescribed for the purposes of that subsection. 
( 4) Where an amendment of the specification of a patent has been allowed under this Ordinance, no 
damages shall be awarded in any proceedings for an infringement of the patent committed before the date of 
the decision to allow the amendment or of the recording of the amendment pursuant to section 43(2), as the 
case may be, unless the court is satisfied that the specification of the patent as originally published was 
framed in good faith and with reasonable skill and knowledge. 
( 5) Without limiting the effect of subsection ( 4), where an order has been made by the court under 
section 46(1) allowing an amendment of the specification of a patent, no damages shall be awarded in any 
proceedings for an infringement of the patent committed after the date on which the order is made and 
before a copy of the order is filed with the Registrar for the purposes of section 46( 5). 
[cf. 1977 c. 37 s. 62 U.K.] IP/N/1/HKG/P/1 
Page 94 
Chapter: 
S¢ction: 514 
82 Thle: PATENTS ORDH{AN'CE Gazettt Number~ 
Heading: Relie:ffor infrmgement of VersW~<l)ate: 30106/1997 · 
partially valid patent 
( 1) If the validity of a patent is put in issue in proceedings for infringement of the patent and it is 
found that the patent is only partially valid, the court may, subject to subsection (2), grant relief in respect of 
that part of the patent which is found to be valid and infringed. 
(2) Where in any such proceedings it is found that a patent is only partially valid, the court shall not 
grant relief by way of damages or costs, except where the plaintiff proves that the specification for the 
patent was framed in good faith and with reasonable skill and knowledge, and in that event the court may 
grant relief in respect of that part of the patent which is valid and infringed, subject to the discretion of the 
court as to costs and as to the date from which damages should be reckoned. 
(3) As a condition of relief under subsection (1) or (2) the court may direct that the specification of 
the patent shall be amended to its satisfaction upon an application made for that purpose under section 102, 
and such an application may be made whether or not all other issues in the proceedings have been 
determined. 
[cf. 1977 c. 37 s. 63 U.K.] Ch~pt~r: 
section: 514 
83 Titlce: ... 
Heading:~•· IP/N/1/HKG/P/l 
Page 95 
PATENTS OROfNANCE (1aiette Nun:(ber:: 
Rigbtt(): continui use ~U:Q: V~sihn Date:· $0/0q/i:997 
before priority date 
(I) Where a patent is granted for an invention, a person who in Hong Kong before the deemed date 
of filing of the application for the standard patent or the date of filing of the application for the short-term 
patent (as the case may be) or, if priority was claimed, before the date of priority-
(a) does in good faith an act which would constitute an infringement of the patent if it were in 
force; or 
(b) makes in good faith effective and serious preparations to do such an act, 
has the rights specified in subsection (2). 
(2) The rights referred to in subsection (1) are-
(a) the right to continue to do or, as the case may be, to do the act referred to in subsection (1 ); 
(b) if such act was done or preparations had been made to do it in the course of a business-
(i) in the case of an individual-
(A) the right to assign the right to do it or to transmit such right on death; or 
(B) the right to authorize the doing of that act by any of his partners for the time 
being in the business in the course of which the act was done or preparations 
had been made to do it; 
(ii) in the case of a body corporate, the right to assign the right to do it or to transmit such 
right on the body's dissolution, 
and the doing of that act by virtue of this subsection shall not amount to an infringement of the patent 
concerned. 
(3) The rights specified in subsection (2) shall not include the right to grant a licence to any person to 
do an act referred to in subsection (1). 
(4) Where a patented product is disposed ofto another in exercise of a right conferred by subsection 
(2), that other and any person claiming through him may deal with the product in the same way as if it had 
been disposed of by a registered proprietor of the patent. 
[cf. 1992 No. 1 s. 55 Eire] IP/N/1/HKG/P/l 
Page 96 
Chapter: 
Seetkm~ 
Remarks: 514. 
84 Titli: .. 
Heading; lM'..TENT:S ORnlNAJ.tCB. · 
· (1etdffoate pf contested · 
validity of patent 
Amendments retroactively made -see 25 of 1998 s. 2 
( 1) If in any proceedings before the court the validity of a patent to any extent is contested and that 
patent is found by the court to be wholly or partially valid, the court may certify the finding and the fact that 
the validity of the patent was so contested. 
(2) Where a certificate is granted under this section, then if, in any subsequent proceedings before 
the court for infringement of the patent concerned or for revocation of the patent, a final order or judgment 
is made or given in favour of the party relying on the validity of the patent that party shall, unless the court 
otherwise directs, be entitled to his costs on the indemnity basis within the meaning of that term as 
appearing in Order 62 rule 28 of the Rules of the High Court (Cap 4 sub. leg.) (other than the costs of any 
appeal in the subsequent proceedings). (Amended 25 of 1998 s. 2) 
[cf. 1977 c. 37 s. 65 U.K.] Chapier; 
Section~· .. 514 
85 PATENTS ORDfNA.NcE G~Nun1ber: IP/N/1/HKG/P/1 
Page 97 
·• :Proc~Jngs for Versi~rr D!tte~ 3(M0611997 
infringement by a co-owner 
( 1) In the application of section 73 to a patent of which there are 2 or more joint proprietors the 
reference to the proprietor shall be construed-
( a) in relation to any act, as a reference to that proprietor or those proprietors who, by virtue of 
section 54 or any agreement referred to in that section, is or are entitled to do that act 
without its amounting to an infringement; and 
(b) in relation to any consent, as a reference to that proprietor or those proprietors who, by 
virtue of section 54 or any such agreement, is or are the proper person or persons to give 
the requisite consent. 
(2) One of 2 or more joint proprietors of a patent may without the concurrence of the others bring 
proceedings in respect of an act alleged to infringe the patent, but shall not do so unless the others are made 
parties to the proceedings, but any of the others made a defendant in pursuance of this subsection shall not 
be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings. 
[cf. 1977 c. 37 s. 66 U.K.] IP/N/1/HKG/P/1 
Page 98 
CtlAA1'~*·. 
Se8ti~n;· 514 
.• <86 • $.ifl~: 
.Heading: PA.'fENTS QfIDlNAmCE •.. 
. lfr~~:t~gs·f(>::r • · 
. :infriijge-:in·e~ft,y e~'CJ11siv~ . 
licensee · ·· Oazerte N~$her: 
Versi~µ l):$t¢i~ 
(1) Subject to this section, the holder of an exclusive licence under a patent shall have the same right 
as the proprietor of the patent to bring proceedings in respect of any infringement of the patent committed 
after the date of the licence; and references to the proprietor of the patent in the provisions of this 
Ordinance relating to infringement shall be construed accordingly. 
(2) In awarding damages or granting any other relief in any such proceedings the court shall take into 
consideration any loss suffered or likely to be suffered by the exclusive licensee as such as a result of the 
infringement, or, as the case may be, the profits derived from the infringement, so far as it constitutes an 
infringement of the rights of the exclusive licensee as such. 
(3) In any proceedings taken by an exclusive licensee by virtue of this section the proprietor of the 
patent shall be made a party to the proceedings, but if made a defendant in pursuance of this subsection 
shall not be liable for costs or expenses unless he enters an appearance and takes part in the proceedings. 
[cf. 1977 c. 37 s. 67 U.K.] IP/N/1/HKG/P/1 
Page 99 
Where a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent 
by virtue of a transaction, instrument or event to which section 52 applies, then unless-
( a) an application for registration of the prescribed particulars of the transaction, instrument or 
event is made before the end of the period of 6 months beginning with its date; or 
(b) the court is satisfied that it was not practicable for such an application to be made before the 
end of that period and that an application was made as soon as practicable thereafter, 
he is not entitled to damages or an account of profits in respect of any infringement of the patent occurring 
after the date of the transaction, instrument or event and before the prescribed particulars of the transaction, 
instrument or event are registered. 
[cf. 1977 c. 37 s. 68 U.K.] IP/N/1/HKG/P/1 
Page 100 
()h~tti{ . :. . 514 
S¢~tio*. 88 . Title:· .. 
•Heading; 
Expanded Cross Reference: 
85,86,87 1t(mttrsJ.D.sJ)INiiNcE· •·: >;> ciai&ttt'Nhmoer; ·.·. 
· 1ufdJ1g~me11io.f rigtnsi. . \l~t$ici~i Pit¢~ SlMO§{t997 ·. 
c,11ferr:~tJ.··~Y.•·P@~.1~~.t.f?,.•nt:.· · 
ifplicat:w~lf 0-f:.~#:fd,a,rd>· 
patent 
( 1) Subject to this section, where an application for a standard patent is published the applicant shall 
have, as from the date of publication and until the grant of the standard patent, the same right as he would 
have had, if the patent had been granted on the date of the publication of the application, to bring 
proceedings in the court for damages in respect of any act which would have infringed the patent. 
(2) Further to subsection (1), references in sections 73, 74, 75, 80, 81 and 85 to 87-<* Note-Exp. 
x-Ref: Sections 85, 86, 87 *> 
(a) to a patent and the proprietor of a patent, as they relate to a standard patent, shall be 
respectively construed as including references to the application for the standard patent and 
the applicant; and 
(b) to a patent being in force, being granted, being valid or existing, as they relate to a standard 
patent, shall be construed accordingly, and for this purpose the reference in section 81(3) to 
section 39( 4) shall be read as a reference to section 33( 4). 
(3) The applicant shall be entitled to bring proceedings by virtue of this section in respect of any act 
only-
( a) after the standard patent has been granted; and 
(b) if the act would, if the patent had been granted on the date of publication of the request to 
record, have infringed not only the standard patent, but also the claims ( as interpreted by the 
description and any drawings referred to in the description or claims) in the form in which 
they were contained in the published request to record. 
( 4) Section 81 ( 4) shall not apply to an infringement of the rights conferred by this section, but in 
considering the amount of any damages for such an infringement, the court shall consider whether or not it 
would have been reasonable to expect, from a consideration of the application for a standard patent as 
published that a patent would be granted conferring on the proprietor of the patent protection from an act of 
the same description as that found to infringe those rights, and if the court finds that it would not have been 
reasonable, it shall reduce the damages to such an amount as it thinks just. 
(5) An applicant shall be deemed never to have had the rights set out in subsection (1) if the 
application for a standard patent is refused or withdrawn or is deemed to be withdrawn. 
[cf. 1977 c. 37 s. 69 U.K.] C~t¢r; 
Seetlon: 514· 
89 xme~ 
Heading: PATENTSQRQINA~~CE 
Hen1edy·:forgro.1u1dless 
threats @f'. hffti~geme11t 
proceedings Gazette Number: IP/N/1/HKG/P/1 
Page 101 
· Versi-0n Date: 3:fJ/06/1997 
(1) Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by 
circulars, advertisements or otherwise threatens another person with proceedings for infringement of a 
patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) 
may, subject to subsection (4), bring proceedings in the court against the person making the threats for any 
such relief as is mentioned in subsection (3). 
(2) In any such proceedings the plaintiff shall, if he proves that the threats were so made and satisfies 
the court that he is a person aggrieved by them, be entitled to the relief claimed unless-
( a) the defendant proves that the acts in respect of which proceedings were threatened 
constitute or, if done, would constitute an infringement of a patent; and 
(b) the patent alleged to be infringed is not shown by the plaintiff to be invalid in a relevant 
respect. 
(3) The said relief is-
(a) a declaration to the effect that the threats are unjustifiable; 
(b) an injunction against the continuance of the ,threats; and 
(c) such damages, if any, as have been sustained by the plaintiff by reason of the threats. 
( 4) Proceedings may not be brought under this section as regards a threat to bring proceedings for an 
infringement alleged to consist of making a product for putting on the market or of using a process. 
(5) For the purposes of this section a notification of the existence of a patent does not of itself 
constitute a threat of proceedings. 
[cf. 1977 c. 37 s. 70 U.K.] IP/N/1/HKG/P/l 
Page 102 
Cllapt~r: 
Section: 514 
90 Title: 
Heading~ PATENTS ORDINA.i:~CE 
Oeeliiradon as. fo 
non-infringement G~¢ttt Number: 
Ver$forrDate: 3 0/06.tt997 
Without prejudice to the court's jurisdiction to make a declaration apart from this section, a declaration 
that an act does not, or a proposed act would not, constitute an infringement of a patent may be made by 
the court in proceedings between the person doing or proposing to do the act and the proprietor of the 
patent, notwithstanding that no assertion to the contrary has been made by the proprietor, if it is shown that-
(a) that person has applied in writing to the proprietor for a written acknowledgment to the 
effect of the declaration claimed, and has furnished him with full particulars in writing of the 
act in question; and 
(b) the proprietor has refused or failed to give any such acknowledgment 
[cf. 1977 c. 37 s. 71 U.K.] Chapter: 
Sectiom ·514 
fl. ·,ride: 
Heading:· . . . . . . . ' . . . 
. P:ow~r:tnrevoke::patent~ e:n . Vet$ion>Oare: . 
application 
PART XII 
REVOCATION OF PATENTS 
General provisions IP/N/1/HKG/P/1 
Page 103 
30!0611997 
(1) Subject to this Ordinance, the court may on the application of any person by order revoke a 
patent for an invention on (but only on) any of the following grounds, that is to say­
(a) that the invention is not a patentable invention; 
(b) that the patent was granted to a person who was not entitled to be granted that patent; 
( c) that the specification of the patent does not disclose the invention in a manner sufficiently 
clear and complete for it to be performed by a person skilled in the art; 
( d) that the matter disclosed in the specification of the patent extends beyond that disclosed in 
the application for the patent as filed or, if the patent was granted on a new application filed 
under section 55(4) or as mentioned in section 22 or 116, in the earlier application for a 
patent as filed; 
( e) that the protection conferred by the patent has been extended by an amendment of the 
application for the patent or the specification of the patent which is invalid; 
( f) that the patent is one of 2 standard patents for the same invention, the applications for 
which were filed by the same person and have the same deemed date of filing; 
(g) that the patent is one of 2 short-term patents for the same invention, the applications for 
which were filed by the same person and have the same date of filing; 
(h) that-
(i) the patent is one of2 patents for the same invention, one such patent being a standard 
patent and the other being a short-term patent, the applications for which were filed by 
the same person and have the same deemed date of filing or date of filing; and 
(ii) the 2 patents are not under the proprietorship of the same person; 
(i) in the case of a standard patent, that the corresponding designated patent has been revoked 
following prescribed opposition or revocation proceedings in the designated patent office. 
(2) An order under this section may be· 
(a) an order for the unconditional revocation of the patent; or 
(b) where the court determines that one of the grounds mentioned in subsection (l)(a) to (h) has 
been established, but only so as to invalidate the patent to a limited extent, an order that the 
patent should be revoked unless within a specified time the specification is amended under 
section 102 to the satisfaction of the court. 
(3) In subsection (l)(f), (g) and (h)-
( a) reference to the date of filing or deemed date of filing of an application for a patent shall be 
read as a reference to that date or, if priority was claimed in respect of the application, to the 
date of priority of the application; 
(b) reference to the applications for 2 patents being filed by the same person shall be read as a 
reference to that case or to the case where-
(i) the person filing one of the applications is the successor in title to the person filing the 
other application; or 
(ii) the persons filing the applications are both successors in title to the same former 
proprietor of the invention. 
[cf. 1977 c. 37 s. 72 U.K.; EPC Art. 138] IP/N/1/HKG/P/1 
Page 104 
Chapter: 
Sttdon: 514 
~Z. Tide: 
H~~irig: 
(1) An application for the revocation of a patent on the ground mentioned in section 91(1)(b)-
(a) may be made only by a person found by the court in an action for a declaration or on a 
reference under section 55 to be entitled to be granted that patent or to be granted a patent 
for part of the matter comprised in the specification of the patent sought to be revoked, or in 
case more than one person is found to be so entitled, by all those persons; and 
(b) notwithstanding paragraph (a), may not be made if the action for a declaration was 
commenced or the reference under section 55 was made after the end of the period of 2 
years beginning with the date of the grant of the patent sought to be revoked, unless it is 
shown that any person registered as a proprietor of the patent knew at the time of the grant 
or of the transfer of the patent to him that he was not entitled to the patent. 
(2) On an application for the revocation of a patent on the ground mentioned in section 9l(l)(f), (g) 
or (h), the court shall not make an order for revocation unless the proprietor of each patent has been 
allowed an opportunity of making observations and of amending the specification of the patent, and if the 
proprietors fail to satisfy the court that there are not 2 patents in respect of the same invention, or to amend 
one or both specifications so as to prevent there being 2 patents in respect of the same invention, the court 
shall revoke the patent having the shorter remaining period in force under section 39(1) or 126(1) (as may 
be appropriate) or, if both patents have the same remaining period in force, shall revoke any one of the 
patents. 
[cf. 1977 c. 37 s. 72 U.K.] Chii'tt'~r: 
Secthm.: 514 
93 Titli: 
B.eadmg: . PATENTS ORDINANCE 
·eatent:tbl~·invtlt1tions 
Patentable inventions ·Gazette•.·Number: IP/N/l/HKG/P/1 
Page 105 
Version:Ditt~: :SQ/0~!1991 
( 1) An invention is patentable if it is susceptible of industrial application, is new and involves an 
inventive step. 
(1 )-(2) The following in particular shall not be regarded as inventions within the meaning of subsection 
(a) a discovery, scientific theory or mathematical method; 
(b) an aesthetic creation; 
( c) a scheme, rule or method for performing a mental act, playing a game or doing business, or 
a program for a computer; 
( d) the presentation of information. 
(3) Subsection (2) shall exclude patentability of subject-matter or activities referred to in that 
subsection only to the extent to which a patent or patent application relates to such subject-matter or 
activities as such. 
( 4) A method for treatment of the human or animal body by surgery or therapy and a diagnostic 
method practised on the human or animal body shall not be regarded as an invention which is susceptible of 
industrial application for the purposes of subsection (1 ), but this subsection shall not apply to a product, and 
in particular a substance or composition, for use in any such method. 
(5) An invention the publication or working of which would be contrary to public order ("ordre 
public") or morality shall not be a patentable invention; however, the working of an invention shall not be 
deemed to be so contrary merely because it is prohibited by any law in force in Hong Kong. 
( 6) A plant or animal variety or an essentially biological process for the production of plants or 
animals, other than a microbiological process or the products of such a process, shall not be patentable. 
[cf. EPC Art. 52 & 53; 1977 c. 37 ss. I & 4 U.K.; 1992 No. I ss. 9 & 10 Eire] IP !NI I /HKG/P /1 
Page 106 
ChAflt¢:r~ 
S®tion: ·Si:4 
.•94· Title: 
Heading:.·.• . PAT£NtS 01IDINAN€E 
N~vetty Oazett~ Nrunben · 
Version Date! 30/06./ 1997' 
(1) An invention shall be considered to be new if it does not form part of the state of the art. 
(2) The state of the art shall be held to comprise everything made available to the public (whether in 
Hong Kong or elsewhere) by means of a written or oral description, by use, or in any other way-
(a) before the deemed date of filing ofan application for a standard patent for the invention or, 
if priority was claimed, before the date of priority; or 
(b) before the date of filing of an application for a short-term patent for the invention or, if 
priority was claimed, before the date of priority, 
whichever is the earlier. 
(3) Additionally, the state of the art shall be considered as comprising the content of­
(a) any application for a standard patent as filed, of which-
(i) the deemed date of filing or, if priority was claimed, the date of priority is before the 
date referred to in subsection (2); and 
(ii) the corresponding designated patent application was published in the designated patent 
office on or after the date referred to in subsection (2); 
(b) any designated patent application as filed in a designated patent office-
(i) of which the date of filing or, if priority was claimed in the designated patent office, 
the date of priority accorded in the designated patent office is before the date referred 
to in subsection (2); and 
(ii) which was published by the designated patent office on or after the date referred to in 
subsection (2); or 
(c) any application for a short-tenn patent-
(i) of which the date of filing or, if priority was claimed, the date of priority is before the 
date referred to in subsection (2); and 
(ii) pursuant to which a short-tenn patent was published under this Ordinance on or after 
the date referred to in subsection (2). 
(4) Subsections (1) to (3) shall not exclude the patentability of any substance or composition, 
comprised in the state of the art, for use in a method referred to in section 93( 4) where its use for any 
method referred to in that subsection is not comprised in the state of the art. 
[cf. EPC Art. 54; 1977 c. 37 s. 2 U.K.; 1992 No. 1 s. 11 Eire] §'hapfor: 
Section: •514 
95 Titl¢: 
Htadmg~ IP/N/1/HKG/P/l 
Page 107 
PAJENTSOfIDfNA.NCE Oa7~¢}-h1m~r: 
N-0n~pr~judi~i;l.dis~losur, VersionA)at~~ 3(W-06/l~l~n· 
in ~~st•ofsU.ndar:d pJte~t 
application 
(1) For the application of section 94 in the case of a standard patent application, but subject to 
section l 5(2)(f), a disclosure of the invention shall not be taken into consideration if it occurred no earlier 
than 6 months before the deemed date of filing of the application and if it was due to, or in consequence of­
( a) an evident abuse in relation to the applicant or any proprietor of the invention for the time 
being; or 
(b) the fact that the applicant or any proprietor of the invention for the time being has displayed 
the invention at a prescribed exhibition or meeting. 
(2) Subsection (l)(b) shall only have effect if, at the time of filing the corresponding designated 
patent application, the applicant stated in accordance with the law of the designated patent office relating to 
non-prejudicial disclosure that the invention had been so displayed. 
[ cf. EPC Art. 55] IP/N/1/HKG/P/1 
Page 108 
Chap;~!= 
. See:ffon: 514 
96. Title': 
. Headhig~ · PATENTSORDrNANCE 
ln:tetttive $tep · (fatetw Nµmb¢r: 
VetSi:on.Date; 
(1) An invention shall be considered as involving an inventive step if, having regard to the state of the 
art, it is not obvious to a person skilled in the art. 
(2) For the purpose of subsection (1), if the state of the art also includes documents within the 
meaning of section 94(3), these documents are not to be considered in deciding whether there has been an 
inventive step. 
[ cf. EPC Art. 56] Chjpter: · 
$ecdQtl~ 514 · 
97 Heading~ .··pA~t:S10RO{NANCE 
·Indijstfial applieatiM · Gazette Numbet IP/N/1/HKG/P/1 
Page 109 
Version Date~ 30/06/!:997 
An invention shall be considered as susceptible of industrial application if it can be made or used in 
any kind of industry, including agriculture. 
[ cf. EPC Art. 57] IP/N/1/HKG/P/1 
Page 110 
Ch~pte:r~ 
~tfo:q; 5l4. 
9$ ·Heading: PAihl'{TS QRPiNANCE. 
Pr:iodt:Y right Q,azette Number: 
Version Date: 30/06/1997 
Priority for standard patent application 
(1) This section applies to the proprietor of a designated patent application for an invention who, on 
the basis of an earlier application in a Paris Convention country for a patent or other protection for the same 
invention, enjoys under the law of the designated patent office a right of priority for the period of 12 months 
after the date of filing the earlier application. 
(2) Such person or his successor in title shall enjoy, for the purposes of filing an application for a 
standard patent for the invention which is the subject of the designated patent application, the same right of 
priority as he enjoys in respect of the designated patent application under the law of the designated patent 
office. 
(3) Subsections (I) and (2) also apply where-
( a) the earlier application was filed in a country, territory or area which is not a Paris 
Convention country; and 
(b) the right of priority enjoyed in the designated patent office is granted consequent upon an 
international agreement to which Hong Kong is a party or which is otherwise applied to 
Hong Kong by a party to the agreement, which agreement provides for the grant of such 
priority on the basis of a first filing made in or for that country, territory or area and subject 
to conditions equivalent to those laid down in the Paris Convention. 
( 4) Reference in this section to the law of a designated patent office includes reference to the law of 
the designated patent office dealing with the circumstances under which-
( a) a filing in a Paris Convention country that is equivalent to a regular national filing under the 
domestic legislation of that country or under bilateral or multilateral agreements gives rise to 
a right of priority; 
(b) a subsequent application for a patent for the same subject-matter as a previous first 
application and filed in or in respect of the same Paris Convention country is to be 
considered as the first application for the purposes of determining priority; 
( c) multiple priorities may be claimed in respect of a designated patent application. 
(5) The rights conferred by this section are subject to sections 15(2)(e) and 23(3)(c). 
(6) In this section, "Paris Convention country" means a country or territory other 
than Hong Kong which is a party to the Paris Convention or a dependent territory of any such country to 
which that Convention has been extended. 
[cf. EPC Art. 87 & 88; 1992 No. 1 ss. 25 & 26 Eire; 1977 c. 37 s. 5 U.K.] @bapter: 
Section:· 514· · 
99 TJtfo~ 
·Heading: .Jh'tfEt{lS••OR,OlNANCE 
f ffett~fpri-0tity .. tigbt IP /N/1/HKG/P /1 
Page 111 
Gazette Nt,imJ)er: 
Version Date: 30{(}t$fl 991: 
(1) The right of priority conferred under section 98 shall have the effect that the date of priority 
enjoyed in the designated patent office shall be regarded as being the date of priority of the standard patent 
application for the purposes of this Ordinance. 
(2) A patent granted pursuant to a standard patent application in respect of which the proprietor 
enjoys a right of priority as provided in section 98 shall not be invalidated by reason only of the fact that any 
subject-matter disclosed in the earlier application (that is to say, the application on the basis of which the 
right of priority is enjoyed in the designated patent office) was made available to the public at any time after 
the date of filing of the earlier application. 
[cf. EPC Art. 89; 1992 No. 1 s. 27 Eire] IP/N/1/HKG/P/l 
Page 112 
c~~ptet: 
Section: St4 
100· Tid~: .. 
Heading: PATSN'.PSQRPlN:ANCE••• : . ·t : Gazette Number: 
. lUgldto·~PatettttJb~iJn~ \lit#onDate: · :30/t)cy/1997 
to inventor 
Right to a patent 
(1) Except as provided in subsection (2), the right to a patent shall belong to the inventor or his 
successor in title. 
(2) If the inventor is an employee, the right to the patent shall be detennined in accordance with the 
law of the country, territory or area in which the employee is wholly or mainly employed or, if the identity 
of such country, territory or area cannot be determined, in accordance with the law of the country, territory 
or area in which the employer has his place of business to which the employee is attached. 
(3) If 2 or more persons have made an invention independently of each other, the right to the patent 
shall belong-
( a) as between persons who have applied for or been granted a standard patent for the 
invention, to the person in respect of whose application for the standard patent the date of 
filing of the corresponding designated patent application or, if priority was claimed, the date 
of priority, is the earlier or earliest; or 
(b) as between persons who have applied for or been granted a short-term patent for the 
invention, to the person in respect of whose application for a short-tenn patent the date of 
filing or, if priority was claimed, the date of priority, is the earlier or earliest; or 
( c) where one or more of the persons has applied for or been granted a standard patent and one 
or more of the persons has been granted a short-term patent, to the person in respect of 
whose application the date specified in paragraphs (a) and (b) (as may be appropriate) is the 
earlier or earliest, 
but in the application of paragraphs (a) and (c) regard shall only be had to an application for a standard 
patent that has been published under this Ordinance. 
[cf. EPC Art. 60; 1992 No. 1 s. 16 Eire] Chapter~ 
Section: 514 
Hll Title; 
H~fog: .. •,.' ... ' '.' . 
tro£etding$ in wbkb Versia:nDate: 
validity ofpa,tent n.t~Y be pnt 
in issue 
Putting validity in issue IP/N/1/HKG/P/l 
Page 113 
( 1) Subject to the following provisions of this section, the validity of a patent may be put in issue-
( a) by way of defence, in proceedings for infringement of the patent under section 80 or, in the 
case of a standard patent, in proceedings under section 88 for infringement of rights 
conferred by the publication of an application; 
(b) in proceedings under section 89; 
( c) in proceedings in which a declaration in relation to the patent is sought under section 90; 
( d) in proceedings before the court under section 91 for the revocation of the patent; 
(e) in proceedings under section 72. 
(2) The validity of a patent may not be put in issue in any other proceedings and, in particular, no 
proceedings may be instituted (whether under this Ordinance or otherwise) seeking only a declaration as to 
the validity or invalidity of a patent. 
(3) The only grounds on which the validity of a patent may be put in issue (whether in proceedings 
for revocation under section 91 or otherwise) are the grounds on which the patent may be revoked under 
that section. 
( 4) No determination shall be made in any proceedings mentioned in subsection (1) on the validity of 
a patent which any person puts in issue on the ground mentioned in section 91(1)(b) unless-
(a) it has been determined-
(i) in entitlement proceedings commenced by that person; or 
(ii) in the proceedings in which the validity of the patent is in issue, 
that the patent should have been granted to him and not some other person; and 
(b) except in the case at paragraph (a)(i)-
(i) the proceedings in which the validity of the patent is in issue are commenced before 
the end of 2 years beginning with the date of the grant of the patent; or 
(ii) it is shown that any person registered as a proprietor of the patent knew at the time of 
the grant or of the transfer of the patent to him that he was not entitled to the patent. 
( 5) Where the validity of a patent is put in issue by way of defence or counterclaim the court shall, if 
it thinks it just to do so, give the defendant an opportunity to comply with the condition in subsection ( 4)(a). 
(6) In subsection (4) "entitlement proceedings", in relation to a patent, means 
a reference under section 55(1) on the ground that the patent was granted to a person not entitled to it or 
proceedings for a declaration that it was so granted. 
[cf. 1977 c. 37 s. 74 U.K.] IP !NI 1/HKGIP II 
Page 114 
Chapter; 
Section: 514 
102 TWe: PATBNTSORDlNANCE · <Q~~.te Nwnh~r: 
Heading: Ameudntent~f p-.atent in Verskm Date: 
infring:ement or revc.¢atfon 
proeeooings 
PART XIII 
GENERAL PROVISIONS AS TO AMENDMENT OF 
PATENTS AND PATENT APPLICATIONS 
(1) In any proceedings before the court in which the validity of a patent is put in issue the court may, 
subject to section 103, allow the proprietor of the patent to amend the specification of the patent in such 
manner, and subject to such terms as to advertising the proposed amendment and as to costs, expenses or 
otherwise, as the court thinks fit. 
(2) A person may give notice to the court of his opposition to an amendment proposed by the 
proprietor of the patent under this section, and if he does so the court shall notify the proprietor and 
consider the opposition in deciding whether the amendment or any amendment should be allowed. 
(3) An amendment of a specification of a patent under this section shall have effect and be deemed 
always to have had effect from the grant of the patent. 
( 4) Rules of court may provide for the notification of any application under this section to the 
Registrar and for his appearance on the application and for giving effect to any order of the court on the 
application. 
[cf. 1977 c. 37 s. 75 U.K.] Chapte:r: 
Secdom SJ4 
103 Title: 
· Hew:ling; Am~n:dments of appli¢~tions Version Date; 
~Jfd pitenu n.otto,i#.ltl~ifo 
added mattet . IP/N/1/HKG/P/1 
Page 115 
(1) An application for a patent-
( a) which is made in respect of matter disclosed in an earlier application, or in the specification 
of a patent which has been granted; and 
(b) which discloses additional matter, that is, matter extending beyond that disclosed in the 
earlier application, as filed, or the application for the patent, as filed, 
may be filed under section 55(4), or as mentioned in section 22 or 116 (as may be appropriate), but shall be 
invalid to the extent that it extends the subject-matter disclosed in the application as filed. 
(2) Any amendment of an application for a standard patent filed under section 31 shall be invalid to 
the extent that it extends the subject-matter disclosed in the application as filed. 
(3) Any amendment of the specification of a patent filed under section 46(1) or 102, or of the 
specification of a standard patent filed under section 43 shall be invalid to the extent that it-
( a) extends the subject-matter disclosed in the application as filed; or 
(b) extends the protection conferred by the patent. 
[cf. 1977 c. 37 s. 76 U.K.] IP/N/1/HKG/P/1 
Page 116 
Ch~r1•· $l4 
Se~ti()m . tOA ·:m:frle: 
Heading~ PAT.ENTS·OROlNANCt 
tJnguage•:of•pr6ee~ings 
before Registrar 
PART XIV ,. .. . . , .. ,, 
V~r:§foa:Oate; · '.$Q/06!1Wl7: 
LANGUAGE OF PROCEEDINGS; AUTHENTIC TEXT 
(1) An application for a patent must be filed in one of the official languages. 
(2) Except as otherwise provided in rules made for the purposes of this section, and notwithstanding 
section 5 of the Official Languages Ordinance (Cap 5), the official language in which an application for a 
patent is filed shall be used as the language of the proceedings in all proceedings before the Registrar 
concerning the application or the resulting patent. 
(3) Where a designated patent application in respect of an invention is in one of the official 
languages, nothing in this section shall be construed as requiring an application for a standard patent in 
respect of that invention to be filed in the same official language. 
(4) Rules may be made-
( a) requiring, in respect of any document filed or to be filed with the Registrar in proceedings 
under this Ordinance, the filing of a translation of the document into the language of the 
proceeding or into one or both official languages; 
(b) providing for the use by any person in oral proceedings before the Registrar, of a language 
other than the language of the proceedings; 
( c) in respect of documents to be used for the purpose of evidence in proceedings before the 
Registrar and which are in a language other than the language of the proceedings, providing 
for the filing of the document in that other language and the filing of a translation of the 
document into the language of the proceedings or into one of the official languages; 
( d) in respect of information provided or to be provided to the Registrar and which is to be 
entered in the register, requiring the provision of that information in both official languages; 
( e) specifying, in cases of entries which are· made in the register in both official languages, 
which entry is to be authentic. 
( 5) Rules made for the purposes of subsection ( 4 )(a) or ( d)-
( a) may specify periods within which translations of documents into the language of the 
proceedings or into the official languages are to be filed or within which information in the 
official languages is to be provided; 
(b) may provide for extensions, upon application by a party to the proceedings, of such periods, 
and may require that applications for such extension shall be subject to the payment of a 
penalty fee. Chaj)te,r: 
S~~tiM1 5.14 
Hl5 Title~ 
. Heading(•· PATE:NTS,QRD1NANCE 
. Autne:ntk~xt · · . ,.· " .... ' 
: Vet$ipn Date~· IP/N/1/HKG/P/l 
Page 117 
Except as provided in section 106, the text of a patent or an application for a patent in the language of 
the proceedings before the Registrar shall be the authentic text in any proceedings before the Registrar or a 
court. 
[cf. EPC Art. 70(1)] IP /N/1/HKG/P/1 
Page 118 
Qhapter: 
Scotton~ .514 
106 Titfot 
Headir-~: Pi\TEN'FS:Oll?i'NANCE ·o~rietfoN:U:mij~r: 
Autlt~:uticttxfof$tjid~d.t Ver::sion Date: 30/06/1991 
patent #n~.tstandard patt:lt 
application 
(I) Subject to subsection (2), the text of the specification of a corresponding designated patent or 
corresponding designated patent application in the language of the proceedings before the designated patent 
office shall be the authentic text of the specification of the standard patent or standard patent application 
respectively for the purposes of any proceedings under this Ordinance relating to the standard patent or 
standard patent application before the Registrar or a court. 
(2) lf-
(a) the language of the proceedings before the designated patent office is other than one of the 
official languages; and 
(b) the corresponding designated patent or designated patent application as translated into one of 
the official languages confers protection which is narrower than that conferred by it in the 
language of the proceedings before the designated patent office, 
then a translation into one of the official languages of the specification of the corresponding designated 
patent or of the claims of the corresponding designated patent application shall be treated as the authentic 
text of the specification of the standard patent or of the claims of the standard patent application respectively 
for the purpose of any proceedings under this Ordinance, other than proceedings for the revocation of the 
patent. 
(3) If any translation such as is mentioned in subsection (2) results in a designated patent or 
designated patent application conferring the narrower protection, the proprietor of or applicant for the 
standard patent may file a corrected translation with the Registrar and, if he pays the prescribed fee within 
the prescribed period, the Registrar shall publish it, but-
( a) any payment for any use of the invention which ( apart from section 69) would have 
infringed the patent as correctly translated, but not as originally translated, or in the case of 
an application would have infringed it as aforesaid if the patent had been granted, shall not 
be recoverable under that section; 
(b) the proprietor or applicant shall not be entitled to bring proceedings in respect of an act 
which infringed the patent as correctly translated, but not as originally translated, or in the 
case of an application would have infringed it as aforesaid if the patent has been granted, 
unless before that use or the doing of the act the corrected translation has been published by the Registrar or 
the proprietor or applicant has sent the corrected translation by post or delivered it to the public officer who 
made use or authorized the use of the invention or, as the case may be, to the person alleged to have done 
that act. 
( 4) Where a correction of a translation is published under subsection (3) and before it is so published 
a person begins in good faith to do an act which would not constitute an infringement of the patent or 
application as originally translated but would (apart from section 69) constitute an infringement of it under 
the amended translation, or makes in good faith effective and serious preparations to do such an act, he shall 
have the rights conferred by section 41(4) and (5), and section 41(6) shall apply accordingly. 
( 5) In this section "language of the proceedings before the designated patent office" 
, in relation to a corresponding designated patent or corresponding 
designated patent application, means the language in which proceedings relating to that patent or application 
are to be conducted before the designated patent office. 
[cf. 1977 c. 37 s. 80 U.K.] C~pte,r: . Sl 4 
S¢tiprE ·'.• · · 107 Title: 
fi~i~g: . ,'. ' ,··, .· ''.',' ·· .. ' 
···4"'¢ijdm,JJ'.t'.•tq:·1~i,,•t••ijr 
pittenti,itP.lk~tibn •to be i~ 
. aiithentic text Gai-~tte N.tmtbe.t; IP/N/1/HKG/P/1 
Page 119 
V:e:f:si~a Date: 30/0(til 991 
An amendment to the specification of a patent or to an application for a patent may only be made in 
the language of the authentic text of the patent or application. IP IN/ 1/HKG/P/1 
Page 120 
Ch3:J~ter;. 
Sedfom 108: . PAi'El{IS QJ.I){N@.NCE. • .. · ... Ciw~tteNuraher: 
· RJghf t<i ~pplj' for l .. · Version Date~ 30106/1997 .. 
short-term patent 
PART XV 
SHORT-TERM PATENTS 
Right to short-term patent 
(I) An application for a short-term patent to be granted under section 118 may be made by any 
person either alone or jointly with another. 
(2) For the purposes of proceedings before the Registrar the applicant shall be deemed to be entitled 
to exercise the right to the short-term patent. Chapter1 
Stctio13;:• · 514 
109 ',,··•,''.·. . ''.' ... , ,,.,,,., 
Nri~rpr,jtdfobddis¢lo$u:re · Version Date: 
Patentability IP/N/1/HKG/P/1 
Page 121 
For the purposes of section 94, a disclosure of the invention shall not be taken into consideration if it 
occurred no earlier than 6 months before the filing of the short-term patent application and if it was due to, 
or in consequence of-
( a) an evident abuse in relation to the applicant or any proprietor of the invention for the time 
being; or 
(b) the fact that the applicant or his legal predecessor has displayed the invention at an official, 
or officially recognized, international exhibition falling within the terms of the Convention on 
International Exhibitions signed at Paris on 22 November 1928 as applying to Hong Kong, 
but paragraph (b) shall apply only if the short-term patent application as filed contains a statement to the 
effect that the invention has been so displayed and contains written evidence in support of the statement 
complying with any prescribed conditions. 
[cf. EPC Art. 55] IP/N/1/HKG/P/l 
Page 122 
Chapter: 
S¢~i-0n~ S:l4 
·10) •Title: 
I-Iea4fog: ' . PA1ENTSO.RD1Ntd(CE 
Priority right 
Priority Gar.ett<tNtm1ber: 
Vers:i~m Date: 30/06,/1997 
(1) A person who has filed-
(a) in or for any Paris Convention country or WTO member country, territory or area, an 
application for a patent or other protection in respect of an invention; or 
(b) in Hong Kong, an application for a short-term patent under this Part in respect of an 
invention, 
or his successors in title, shall enjoy, for the purpose of filing a subsequent application for a short-term 
patent under this Part 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, subject to compliance with any prescribed conditions. 
(2) For the purposes of subsection (1) as it applies in the case of a filing specified in paragraph (a) of 
that subsection-
( a) every filing which in a Paris Convention country or WTO member country, territory or area 
is equivalent to a regular national filing under its domestic legislation or under bilateral or 
multilateral agreements shall be recognized as giving rise to a right of priority; 
(b) a subsequent application for a patent or other protection for the same subject-matter as a 
previous first application and filed in or for the same Paris Convention country or WTO 
member country, territory or area shall be considered as the first application for the 
purposes of determining priority if, and only if, at the date of filing the subsequent 
application, the previous application has been withdrawn, abandoned or refused, without 
being open to public inspection and without leaving any rights outstanding, and has not 
served as a basis for claiming a right of priority; 
( c) where pursuant to paragraph (b) a subsequent application for a patent or other protection is 
considered as a first application, the previous application may not thereafter serve as a basis 
for claiming a right of priority, 
and in this subsection, "regular national filing" means any filing that establishes the date 
on which the application was filed, whatever may be the outcome of the application. 
(3) For the purposes of subsection (1) as it applies in the case of a filing specified in paragraph (b) of 
that subsection-
( a) every regular filing of an application for a short-term patent under this Part shall be 
recognized as giving rise to a right of priority in relation to other applications under this Part; 
(b) a subsequent application for a short-term patent under this Part for the same subject-matter 
as a previous first application for a short-term patent shall be considered as the first 
application for the purposes of determining priority if, and only if, at the date of filing the 
subsequent application, the previous application has been withdrawn, abandoned or refused,· 
without being open to public inspection and without leaving any rights outstanding, and has 
not served as a basis for claiming a right of priority; 
( c) where pursuant to paragraph (b) a subsequent application for a short-term patent is 
considered as a first application, the previous application for a short-term patent may not 
thereafter serve as a basis for claiming a right of priority, 
and in this subsection "regular filing of an application for a short-term patent" 
means any filing that establishes the date on which the application for the short-term patent was 
filed, whatever may be the outcome of the application. 
( 4) In this section, "application for a patent or other protection" 
means an application for a patent or for the registration of a utility model or for a utility certificate or for an 
inventor's certificate filed in or for any Paris Convention country or WTO member country, territory or 
area. 
[cf. EPC Art. 87; 1992 No. 1 s. 25 Eire] Chap~er; 
S~tfoo: 514 
lll Title~ 
:Heading:. PA TENTS ORDINANCE 
ClaifuiRltPriO:dty Gazette Number~ IP/N/1/HKG/P/l 
Page 123 
V'er$ion Date: 30/06/1991 
(1) An applicant for a short-term patent desiring to take advantage of the priority of a previous 
application shall file in the prescribed manner a statement of priority and a copy of the previous application. 
(2) Multiple priorities may be claimed in respect of a short-term patent application, notwithstanding 
the fact that they originated in different countries, and where appropriate, multiple priorities may be claimed 
for any one claim. 
(3) Where multiple priorities are claimed, time limits which run from the date of priority shall run 
from the earliest date of priority. 
( 4) If one or more priorities are claimed in respect of a short-term patent application, the right of 
priority shall cover only those elements of the short-term patent application which are included in the 
application or applications whose priority is claimed. 
(5) If certain elements of the invention for which priority is claimed do not appear among the claims 
formulated in the previous application, priority may nonetheless be granted if the documents of the previous 
application as a whole specifically disclosed such elements. 
( 6) Where a statement of priority is filed in accordance with this section, the applicant shall for the 
purpose of proceedings before the Registrar be deemed to be entitled to enjoy the right of priority shown in 
the statement. 
[cf. EPC Art. 88] IP/N/1/HKG/P/l 
Page 124 
ChAAtert 
Se.ct:iin: 514 
H2 mme: 
··Heading! Gazette Number: ,...... . -
Effec:tof prforlty f:igld VersionJ)a~! 30106/199:7. 
(1) The right of priority shall have the effect that the date of priority of the previous application 
claimed under section 111 shall be regarded as being the date of priority of the short-term patent application 
for the purposes of section 94(2) and (3) as it applies to this Part. 
(2) Where a short-term patent application is filed and the priority of a previous application is claimed 
under section 111, then, notwithstanding anything contained in this Ordinance, the short-term patent 
application and any short-term patent granted in pursuance of it shall not be invalidated by reason only of 
the fact that any subject-matter disclosed in the previous application was made available to the public at any 
time after the date of filing of the previous application. 
[cf. EPC Art. 89] Ct1ijpten 
Se<;tkm~ 514 
113 Title; 
Heading! ReqJiirements:of short~term Ver$ion Date: 
patent application 
Applications IP/N/1/HKG/P/1 
Page 125 
30/06/1997 
(1) Every application for a short-term patent shall be signed by the applicant and be filed with the 
Registrar in the prescribed manner and shall contain-
( a) a request for the grant of a short-term patent; 
(b) a specification which provides on the face of it for-
(i) a description of the invention to which the application relates; 
(ii) one or more claims but not exceeding one independent claim; 
(iii) any drawings referred to in the description or the claim or claims; 
( c) an abstract; and 
( d) a search report in relation to the invention. 
(2) An application for a short-term patent-
(a) shall state the name and address of the applicant; 
(b) shall identify the person or persons whom the applicant believes to be the inventor or 
inventors and shall specify the last known address of that person or persons; 
(c) where the applicant is not the sole inventor or the applicants are not the joint inventors, shall 
contain a statement indicating the derivation of his or their entitlement to exercise the right to 
the short-term patent; and 
( d) shall specify an address in Hong Kong for service of documents. 
(3) Every such application shall also comply with the requirements of this Ordinance as to the 
provision of information in, or the translation of documents into, one or both official languages. 
( 4) Rules may provide-
( a) that a short-term patent application shall or may contain a title of the invention and a 
designation of the classification of the invention; 
(b) for the manner in which the following matters shall or may be contained in a short-term 
patent application-
(i) any statement in accordance with subsection (2) relating to the inventor or the 
derivation of the applicant's right to grant; 
(ii) any claim to the priority of an earlier patent application and supporting priority 
documents in accordance with section 111; 
(iii) any request for deferral of the grant of a patent in accordance with section 119; 
(iv) any claim regarding non-prejudicial disclosure in accordance with section 109; 
(v) in relation to any invention which requires for its performance the use of a 
micro-organism, information concerning the availability to the public of samples of the 
micro-organism. 
( 5) A filing fee and an advertisement fee shall be payable within 1 month after the earliest filing with 
the Registrar of any part of the application, and if either fee is not paid within that period or within such 
further period of grace as may have been allowed under subsection (6) the application shall be deemed to be 
withdrawn. 
( 6) Rules may provide for a period of grace within which a filing fee or advertisement fee that has 
not been paid within the time limit specified in subsection ( 5) may still be validly paid. 
(7) The foregoing provisions shall not prevent any application being initiated by documents 
complying with section 114(2). 
(8) In this section "search report" means a report-
(a) by a prescribed searching authority of a search undertaken by that authority as to the prior 
art in relation to the invention, based on the claims and having due regard to the description 
and drawings (if any); and 
(b) which contains the prescribed information. 
[cf. 1992 No. 1 s. 18 Eire; EPC Art. 78] IP IN/ l/HKG/P/1 
Page 126 
<!h~r,ter: 
~ti(m: 514 
ll4 Title:. 
Heading: PATENTS:·()ROlNANCE 
.·. : Exa«linuti(>:~Jiri.ming 
(I) The Registrar shall examine whether-Gazette Number:: 
\rersfoo Dat¢~ 
( a) the short-term patent application satisfies the requirements specified in subsection (2) for the 
accordance of a date of filing ("minimum requirements"); 
(b) the prescribed filing fee and advertisement fee has been paid in due time. 
(2) The date of filing of a short-term patent application shall be the earliest date on which documents 
filed by the applicant contain-
(a) an indication that a short-term patent is sought; 
(b) information identifying the applicant; 
( c) a part which on the face of it appears to be a description of an invention. 
(3) If a date of filing cannot be accorded because of deficiencies as regards the mm1mum 
requirements, the Registrar shall give the applicant an opportunity to correct the deficiencies in accordance 
with the rules. 
( 4) If the deficiencies are not corrected within the time prescribed in the rules, the application shall 
not be dealt with as an application for a short-term patent. 
[ cf. EPC Art. 80 & 90] l;hapter: 
Section: 514 
115 Title: 
Heading; Eumb1atiun~ wf0:r:maJ Version Date: 
requirements IP/N/1/HKG/P/l 
Page 127 
(1) If a short-term patent application has been accorded a date of filing, and is not deemed to be 
withdrawn by virtue of section 113( 5), the Registrar shall examine whether the requirements of section 113 
and of any rules made for the purposes of that section (the 11formal requirements") have been satisfied. 
(2) Where the Registrar notes that there are deficiencies as regards the formal requirements which 
may be corrected, he shall give the applicant an opportunity to correct them in accordance with the rules. 
(3) If-
( a) there are deficiencies as regards the formal requirements which cannot be corrected the 
application for a short-te1m patent shall be refused; or 
(b) any deficiencies as regards the formal requirements noted in the examination under 
subsection ( 1) are not corrected in accordance with the rules, then except as provided in 
subsection ( 4 ), the application for a short-term patent shall be refused or, if no steps are 
taken to correct the deficiencies, shall be deemed to be withdrawn. 
(4) If a deficiency relating solely to a claim to any right of priority is not duly corrected then such 
right shall be lost for the application. 
[cf. EPC Art. 91] IP/N/1/HKG/P/1 
Page 128 
qbaj)t¢r: 
Sedfon: 514 
H6 Tide; 
Jteacling~ "<··-,;:·· ... ,. ·:·· ·.· .•.'.' .. ' '.' .. ·. 
Uifisionalshl)f'f•tetm:< 
patent application Gazette Number,~ 
· Versioo Date: 30/06/1997. 
Where, after an application for a short-term patent has been filed and before the date under section 
122 on which preparation for publication of the patent has commenced, a new application for a short-term 
patent is filed by the original applicant or his successor in title in accordance with the rules to be prescribed, 
being an application-
( a) which is in respect of any part of the subject-matter contained in the earlier short-term 
patent application; 
(b) which complies with the relevant requirements including procedures and time limits specified 
in the rules; and 
( c) which does not contravene section 103, 
then such new application shall be treated as having, as its date of filing, the date of filing of the earlier 
short-term application and shall have the benefit of any right of priority. Chapt~: 
S~¢tio~~ 514 
HI Thl:e~ 
Beading: PATIHWf~·•.ORDtNANCE IP /N/1/HKG/P/1 
Page 129 
Except as expressly provided to the contrary, nothing in this Part providing for the examination by the 
Registrar of an application for a short-term patent for an invention shall be construed as imposing any 
obligation upon the Registrar to consider or to have regard to, for the purpose of such examination, any 
question as to-
( a) the patentability of the invention; 
(b) whether the applicant is entitled to any priority claimed in the application; 
( c) whether the invention is properly disclosed in the application; or 
(d) any matter specified in section 45, 77, 78, 79, 93, 94, 96, 97, 100, 109, 110, 111(2) to (6) 
or 120(2). IP/N/1/HKG/P/l 
Page 130 
tthapte:r-1 
~do:n: SJ4 
l:18 Titre~· 
He$1inj~ "' .. · .".', • Q:~tte Number; . .. --' 
Granto(sh~rt~te:rm.pat~t Version Datet · lo/66/1997 
and publication 
Procedure up to and including grant 
(1) If on examination by the Registrar under section 115(1) an application for a short-term patent is 
found to have satisfied the requirements of that provision, or if on a subsequent examination the deficiencies 
noted by the Registrar under section 115(2) are found to have been corrected in accordance with the rules, 
then as soon as practicable after such examination, but subject to sections 119 and 124, the Registrar shall 
grant a short-term patent for the invention. 
(2) As soon as practicable after a short-term patent has been granted under this section the Registrar 
shall-
(a) publish in the prescribed manner the specification of the short-term patent, the names of the 
proprietor and, if different, the inventor; 
(b) issue a certificate of grant; and 
( c) advertise the fact of such grant by notice in the Gazette. 
(3) The Registrar may in any publication under subsection (2)(a) publish in addition to the matters 
specified in that subsection any other matters constituting or relating to the patent which in the Registrar's 
opinion it is desirable to publish. Chapter~ 
~tiom · 119 Title~ 
Headtrigz PATEN'fSORD!&)~~cs· 
:: ,b;t~;tal qf::gfJ~t ifp~tent 
at applicant's request ·.·.·,,·,.·.·,·,., ·. ·.·,. IP /N/1/HKG/P/l 
Page 131 
Versiotl Date: 30i06tt997 
(1) Where in his application for a short-term patent an applicant has requested the Registrar to defer 
the grant of a patent for a period specified in the application, a short-term patent shall not be granted in that 
application until-
( a) the expiry of that period, or of such shorter period as the applicant may subsequently 
specify by notice filed with the Registrar, after the date on which the requirements of section 
115(1) are found to have been satisfied; or 
(b) 12 months after the date of filing of the application, 
whichever occurs first. 
(2) Where a request has been made under this section for the deferral of a grant, any grant under 
section 118( 1) shall be made by the Registrar as soon as possible after the expiry of the period of deferral 
applying by virtue of this section. IP/N/1/HKG/P/1 
Page 132 
Chapter: 
Sediom Titfo: 
Heading: Am~nil~ient rtf a1~p,lit"ti~n . ·. Versfon<Qate: 
ft>:r:>Sh(td:,:t~rm p~lt,t,,:t ~tforf 
grant JQ/06!1997 
(1) Subject to this section and sections 122 and 103, at any time before a patent is granted under this 
Part an applicant may, in accordance with the prescribed conditions, amend the application of his own 
volition. 
(2) Any amendment made under this section shall be invalid to the extent that it extends the 
subject-matter disclosed in the application as filed. 
(3) The Registrar may, without an application being made to him for the purpose, amend the 
specification and abstract contained in an application for a short-term patent so as to acknowledge a 
registered trade mark. 
[cf. 1977 c. 37 s. 19 U.K.] Chapter: 
&ecfo:ni: S.t4 
lll IP/N/1/HKG/P/1 
Page 133 
PAlh~TS OR:OfNANCE G:azew:Niu~i~r: 
Withdrawa,J ijf.•~Pikation Ve-rs km Qijt¢~ $0/~ff fi91 
( 1) At any time before a short-term patent is granted the applicant may, subject to section 122, 
withdraw in writing his application and any such withdrawal may not be revoked. 
(2) Where a short-term patent application is withdrawn under this section, or is deemed under this 
Ordinance to have been withdrawn, or is refused under any provision of this Ordinance, the following 
provisions shall apply-
( a) the applicant shall continue to enjoy the right of priority under section 112 which he enjoyed 
immediately before such withdrawal or refusal; 
(b) no other right may be claimed under this Ordinance in relation to the application. IP/N/1/HKG/P/l 
Page 134 
Cham¢r: 
SectiotJ; 514 
1'22 ·PA111N:TS·ORD1NANCE '' .. ,• .· ·.··· . . 
LimJt:~tiQn ,,r :Withdr:trwaJ,i Version Oat¢: 
#:Ql~t(dtne~t't tt:c~ of 
a pplicatfon 
No withdrawal of an application under section 121, no divisional application under section 116 nor any 
amendment under section 120 shall be allowed after the date on which preparations for publication under 
section 118(2) of the specification of a short-term patent to be granted in pursuance of the application have 
been completed. C~aptee 
Sectiort: 514 
123 Title: 
Heading~ . . . . 
PATf.ZNTS ORDINANCE Gazette Niu.n.ber: IP/N/1/HKG/P/1 
Page 135 
f urthE'T<p.roc,~,sing)>f, and. Version Date; 30/0611997 
r~stcmttfon <Of Tights in 
f'e:ip~~t 91; £b:0rt~t~rm 
•patent applications · 
(1) Sections 28(1) and (2), 29(1) and (2) and 30 shall apply, subject to necessary modification, to an 
application for a short-term patent as if a reference in those sections to an application for a standard patent 
and to Part II were a reference to an application for a short-term patent and to this Part respectively. 
(2) Section 28 as applied by subsection (1) does not apply in the case of a deemed withdrawal of an 
application under section 113(5). 
(3) Section 29 as applied by subsection (1) does not apply in the case of a failure to comply with a 
time limit under section 113, 114 or 115. IP/N/1/HKG/P/1 
Page 136 
Chapter: 
Se~fo:m,; su. 
124 TiJfo: 
Heading: :PATEr-FfS ORJ])mANCE · 
R~isttar may ref~se to . 
grant short-term patent Ga2¢tteNumber.: 
Version Date: l0i:(ffj/I997 
The Registrar may refuse to grant a short-term patent for an invention if he considers that the 
invention is not a patentable invention by reason of any of the matters specified in section 93(5), and the 
Registrar shall give notice of any such refusal to the applicant. . . . '. . ·. 
$:ij9rMer~ p~1~~f . . .. Vers1~n Date: 
·~pplt¢:atih~·t,~~ P#······ 
international•app:Uc:ation IP/N/1/HKG/P/1 
Page 137 
(1) Where an international application seeking a patent for a utility model and designating the 
People's Republic of China has entered its national phase in the People's Republic of China, the applicant in 
the international application may apply for a short-term patent for the invention (if any) disclosed in that 
application. 
(2) An application for a short-term patent made pursuant to this section may be filed at any time 
before a date 6 months after the entry into the national phase of the international application in the People's 
Republic of China, or such other date as may be prescribed by rules. 
(3) An application for a short-term patent made pursuant to this section shall contain-
(a) a photocopy of the international application as published by the International Bureau under 
Article 21 of the Patent Cooperation Treaty; 
(b) a photocopy of the international search report in relation to the international application as 
published under Article 21(3) of the Patent Cooperation Treaty (whether contained in the 
international application as published or separately published); 
( c) the date of entry of the international application into the national phase in the People's 
Republic of China; 
( d) a photocopy of the translation of the international application (if any) published by the 
Chinese Patent Office; and 
( e) a photocopy of any information that may be published by the Chinese Patent Office 
concerning the international application. 
(4) Section 113 applies in relation to an application for a short-term patent made pursuant to this 
section as if for subsection ( 1 )(b) to ( d) of that section there was substituted a reference to the documents 
specified in subsection (3)(a) to (e) of this section. 
(5) Where an application made pursuant to this section results in the grant of a short-term patent, the 
application shall be deemed to have as its date of filing the international filing date accorded to the 
international application for the purposes of Article 11 of the Patent Cooperation Treaty and, in this 
Ordinance, reference to the date of filing of an application in relation to a short-term patent which has been 
granted pursuant to an application made as provided for in this section shall be construed accordingly. 
(6) In this section, "Chinese Patent Office" means the office established under the 
laws of the People's Republic of China for the granting of patents for inventions. IP !NI I /HK GIP I I 
Page 138 
Ch~pt¢(: 514 .•... Tide: .·. PA/fJ:;.1fl~ :pffiJfNANCt Gazette Ntut(bet: 22 ·-0f: 1999': 
Section: 126. Heatiing; Term Qf: s:ltQ:rt·..:ttrtit t)attmt Version Date: Ol/0111997 
Remarks: 
Amendments retroactively made -see 22 of 1999 s. 3 
Provisions as to short-term patents after grant 
(1) A short-term patent granted under this Part-
(a) shall take effect on the date on which the fact of its grant is advertised in the Gazette; and 
(b) subject to subsection (2) and (3), shall remain in force until the end of the period of 8 years 
beginning with the date of filing the application for the patent. 
(2) If it is desired to keep a short-term patent in force for a further 4 years after the expiry of the 4th 
year from the date of filing of the application for that patent, the prescribed renewal fee shall be paid within 
the 3 months ending with the expiry of that 4th year, and a short-term patent shall cease to have effect at 
the expiry of that 4th year if the renewal fee is not so paid. 
(3) Despite subsection (2), where the date of grant of a short-term patent occurs after the expiry of 
the 4th year from the date of filing of the application for that patent then-
( a) the prescribed renewal fee may be paid at any time before the expiry of 3 months beginning 
from the date of grant and in the event of such payment the patent shall remain in force for 
the balance of the period of 4 years specified in subsection (2); 
(b) the patent shall cease to have effect under this section if, and only if, the prescribed renewal 
fee is not paid as provided in paragraph (a). 
( 4) The Registrar may by regulation amend the period specified in subsection (2) as being the period 
ending with the expiry of the 4th year from the date of filing of the short-term patent application. 
(5) If within 6 months after the end of the period specified in subsection (2) or (3), as the case may 
be, the renewal fee and any prescribed additional fee is paid, the short-term patent shall be treated as if it 
had never expired, and accordingly-
( a) anything done under or in relation to it during that further period shall be valid; 
(b) an act which would constitute an infringement of it if it had not expired shall constitute such 
an infringement; and 
( c) an act which would constitute Government use of the patented invention if the patent had 
not expired shall constitute that use. 
(6) The Chief Executive in Council may by regulation amend-(Amended 22 of 1999 s. 3) 
(a) the period specified in subsection (l)(b) as being the period for which a short-term patent 
shall remain in force; 
(b) the period specified in subsection (2) or (3) by reference to which a short-term patent, if not 
renewed, shall cease to have effect. 
[ cf. 1977 c. 37 s. 25 U.K.] :Ch,~ptir; 
Seetfo.m 514 
127 "Hde: 
Heading:· PATEh'TS ORDINANCE. ··. Gazette Num~: IP/N/1/HKG/P/l 
Page 139 
R&toratfon offapsed Version Date: 30./06/1997 
short-term patents 
Sections 40 and 41 shall apply to short-term patents, with necessary modification, as if reference in 
those sections to a standard patent and to section 39 were a reference to a short-term patent and to section 
126 respectively. IP/N/1/HKG/P/1 
Page 140 
Chapte:h 
Section; 514 
128 ~fide: 
Hw..«!iOiF· PATENTS ORDINANCE 
Di$~losn:r.e of:i:1tve:J1don tty Ver:skin P~tte:· 
spedfi(!atil.m; availability ·~f 
· samples of ntkro-organisnts 
Miscellaneous 
( 1) Provision may be made by rules prescribing the circumstances in which the specification of an 
application for a short-term patent, or of a short-term patent, for an invention which requires for its 
performance the use of a micro-organism is to be treated as disclosing the invention in a manner sufficiently 
clear and complete for the invention to be performed by a person skilled in the art. 
(2) The rules may in particular require the applicant or proprietor-
( a) to take such steps as may be prescribed for the purposes of making available to the public 
samples of the micro-organism; and 
(b) not to impose or maintain restrictions on the uses to which such samples may be put, except 
as may be prescribed. 
(3) The rules may provide that, in such cases as may be prescribed, samples need only be made 
available to such persons or descriptions of persons as may be prescribed; and the rules may identify a 
description of persons by reference to whether the Registrar has given his certificate as to any matter. 
(4) An application for revocation of the short-term patent under section 91(1)(c) may be made if any 
of the requirements of the rules cease to be complied with. 
[cf. 1977 c. 37 s. 125A U.K.] Chapter: 
Section: 514 
129 Title: 
·Heading;~ PATENTS•.ORDff•h'\;;~CE 
C0:nd•pro¢e-edl1g~j~ 
r,1ati1M·to.$~!r,fte:n11 
patents GazeueNwuber: IP/N/1/HKG/P/1 
Page 141 
Version Dat..e: 30f.0.61T991: 
(1) In any proceedings before a court for the enforcement of rights conferred under this Ordinance in 
relation to a short-term patent-
( a) it is for the proprietor of the patent to establish the validity of the patent, and the fact that 
the patent has been granted under this Part shall be of no account in that regard; 
(b) evidence by the proprietor which is sufficient to establish prima facie the validity of the 
patent shall in the absence of evidence to the contrary be sufficient proof of such validity. 
(2) If in proceedings before the court under this Ordinance in relation to a short-term patent an order 
is made in interlocutory proceedings granting or refusing an application for an injunction under section 
80(1)(a) or an order under section 80(1)(b), any party may apply to the court for an order that the matter 
proceed to early trial and, subject to compliance by that party with rules of court, the court shall so order 
unless it considers that the interests of justice would not be served by the making of such an order. 
(3) A court making an order for an early trial under subsection (2)-
(a) may also make such order as respects the period before trial as the justice of the case 
requires; 
(b) shall by the order determine the mode of trial. IP/N/1/HKG/P/l 
Page 142 
Chapter: 
Section; ·tiileJ 
·Heading~ .... PATENTSQRJ?f:N~.hfNCE 
.Appe~d·ftom Retistrar. 
PART XVI 
MISCELLANEOUS G~ne Numoee 
Versfon Daw~. 31):l)p/J99:7 
(1) Except as otherwise expressly provided by rules, an appeal to the court shall lie from any decision 
or order of the Registrar under this Ordinance, and for the purposes of this provision 11decision11 
includes any act of the Registrar in exercise of a discretion vested in him by or under this Ordinance. 
(2) Any appeal under this Ordinance which concerns a patent application which has not been 
published shall be heard in private. 
(3) In any appeal under this Ordinance-
(a) the Registrar shall be entitled to appear or be represented and be heard in support of his 
decision or order; 
(b) the Registrar shall appear if so directed by the court. 
( 4) In any appeal under this Ordinance the court may exercise any power which could have been 
exercised by the Registrar in proceedings from which the appeal is brought. PATh"N~fSOROlWANCE , Gai¢tt~Num~r: IP/N/1/HKG/P/1 
Page 143 
Chapter~ 
Sectkm: Sl4 
tu Titlei. 
Hooding: Regisb'.art ~ ~ppeatan~tin Versfon Date: 30/.06h9:91 
proe~cediiigs lttvolvillg 
register 
( 1) In any proceedings before the court involving an application for the alteration or rectification of 
the register, the Registrar shall be entitled to appear or be represented and be heard, and shall appear if so 
directed by the court. 
(2) Unless otherwise directed by the court, the Registrar may instead of appearing submit to the 
court a statement in writing signed by him, giving particulars of-
( a) any proceedings before him in relation to the matter in issue; 
(b) the grounds of any decision given by him affecting it; 
( c) the practice of the registry in like cases; or 
( d) such matters relevant to the issues and within his knowledge as Registrar as he thinks fit, 
and the statement shall be deemed to form part of the evidence in the proceedings. IP/N/1/HKG/P/1 
Page 144 
Ch~pte:r! 
S®tiQn: 514 
132 PA:t'h~ats ORDlNAijQE. . . ..... Ct~tt~ Ngmoef .. 
Ge:ntral ()():Weti o:f :tihreoutt Version Dat~i 
(1) The court may, for the purpose of determining any question in the exercise of its original or 
appellate jurisdiction under this Ordinance, make any order or exercise any other power which the Registrar 
could have made or exercised for the purpose of determining that question. 
(2) Every order of the court shall be subject to appeal to the Court of Appeal. 
[cf. 1977 c. 37 s. 99 U.K.] Chapter: 
Section: SJ4 
133. Title: 
ijea4irj:g: .PATENTS:OROJNANCE 
Proc~tin:re bf~se. of option \tersiQn P~te: 
t<t apply t~ c~~rt or ·· 
·Reglstrai .. · IP/N/1/HKG/P/1 
Page 145 
30f Q6/J991 
( 1) Where under this Ordinance an applicant has an option to make an application either to the court 
or to the Registrar-
( a) if an action concerning the patent or application for a patent in question is pending, the 
application must be made to the court; 
(b) if in any other case the application is made to the Registrar, the Registrar may, at any stage 
of the proceedings, refer the application to the court, or he may, after hearing the parties, 
determine the question between them, subject to appeal to the court. 
(2) Subsection (1) is without prejudice to the court's powers, apart from this section, to determine 
any question referred to in that subsection. 
(3) Reference in subsection (1) to an option to make an application either to the court or to the 
Registrar includes reference to an option to refer a question either to the court or to the Registrar. 
[ cf. Trade Marks Ord. s. 80] IP/N/1/HKG/P/1 
Page 146 
C,haprer: 
Sectio.m· 514 
134 PATENl::SQROINAJNCE · G~tt~ N\.!mbey:: 
Heading: JJutden <tf proofln<cirtatu VersfooDate: lQ/O(#lfl91:: 
cases 
( 1) If the invention for which a patent is granted is a process for obtaining a new product, the same 
product produced by a person other than the proprietor of the patent or a licensee of his shall, unless the 
contrary is proved, be taken in any proceedings to have been obtained by that process. 
(2) In considering whether a party has discharged the burden imposed upon him by this section, the 
court shall not require him to disclose any manufacturing or commercial secrets if it appears to the court that 
it would be unreasonable to do so. 
( cf. 1977 c. 37 s. 100 U.K.] Chapter: 
Seqtion: 514 
t3S Titlet 
Heading; •, . ' ....... ' .. ··.· 
· E.xerds~ lo,fJtegistral"'s 
discretionary powers G~tte.Nµmb~r: 
VerslonJJate: IP/N/l/HKG/P/1 
Page 147 
Without prejudice to any rule of law, the Registrar shall give any party to a proceeding before him an 
opportunity of being heard before exercising adversely to that party any discretion vested in the Registrar by 
this Ordinance or by the rules. 
(cf. 1977 c. 37 s. 101 U.K.] IP IN/ 1/HK GIP /1 
Page 148 
Chapter: 
s~~ti9n: 5t4 
U6 . RA'ffi:1'rrs ORDJN-A.NCE 
·Cos,ts and e~~nses ht 
pr:-9~e~~n,1.s·nef-Qt~>tbe court·· · · · · · · Oatette•·Nuniber.~ 
Yerscion :!Ja;e: 
(1) Subject to subsection (2), in all proceedings before the court under this Ordinance the court may 
award to any party such costs as it may consider reasonable and the costs of the Registrar shall be in the 
discretion of the court, but the Registrar shall not be ordered to pay the costs of any other of the parties. 
(2) In proceedings before the court under section 58 the court shall, in determining whether to award 
costs or expenses to any party and what costs or expenses to award, have regard to all the relevant 
circumstances, including the financial position of the parties. 
(3) If in any such proceedings the court directs that any costs of one party shall be paid by another 
party, the court may settle the amount of the costs by fixing a lump sum or may direct that the costs shall be 
taxed on a scale specified by the court, being a scale of costs prescribed by rules of court. 
[cf. 1977 c. 37 s. 106 U.K.] Chapter: 
Sec:tiori: · 514 
.1:37 . Title: 
Heading: PATENTS ORDINANCE 
C~t, and ii~nses in 
ptocttdings b~f~t~ RegistriF ·.· . . · Gazette Niliriber: IP/N/1/HKG/P/1 
Page 149 
VersiortDate: 30/06/1991 
( l) The Registrar may, in proceedings before him under this Ordinance, by order award to any party 
such costs as he may consider reasonable and direct how and by what parties they are to be paid. 
(2) Any costs awarded under this section shall, if the court so orders, be recoverable by execution 
issued from the court as if they were payable under an order of that court. 
(3) Rules may empower the Registrar, in such cases as may be prescribed, to require a party to 
proceedings before him to give security for costs, in relation to those proceedings or to proceedings on 
appeal, and may provide for the consequences if security is not given. 
[cf. 1977 c. 37 s. 107 U.K.] IP /N/1/HKG/P /1 
Page 150 
Ph~pt¢r: 
~ctiont. 514 
138< Title;·· 
Headfogt ~AtfEh'TSORDfNANCS .· Q~4t;~Nutnb¢f-~ 
tJceQ~~ gr~»te.d<by ofd~r· Veh>ion Date~. JQ/~/1991' 
of the court or Registrar 
Any order for the grant of a licence under section 14, 56, 64 or 65 shall, without prejudice to any 
other method of enforcement, have effect as if it were a deed, executed by the proprietor of the standard 
patent and all other necessary parties, granting a licence in accordance with the order. 
[cf. 1977 c. 37 s. 108 U.K.] Cl~pter;: 
-Sectimt 514·· 
· Hl9 · Title: 
· Heading~ ·· IP/N/1/HKG/P/l 
Page 151 
PA11ffWI$ <>ROtNiiNCE: ·. :> O~~tNumber: 
··• Jriln.t~uity otR~li#at•as Versioi1 Dat~t~· .·JW06fl997·. ·· 
regards official acts 
Neither the Registrar nor any officer of his-
( a) shall be taken to warrant the validity of any patent granted under this Ordinance; or 
(b) shall incur any liability by reason of or in connection with any examination or investigation 
required or authorized by this Ordinance, or any report or other proceedings consequent on 
any such examination or investigation. 
[cf. 1977 c. 37 s. 116 U.K.] IP/N/1/HKG/P/1 
Page 152 
(1) Subject to this section and to the rules, where under this Ordinance any act has to be done by or 
to any person in connection with a patent or any procedure relating to a patent or the obtaining of a patent, 
the act may be done by or to an agent of such person duly authorized by that person orally or in writing. 
(2) A person duly authorized by another person under subsection (1) to act as his agent may (subject 
to any provision to the contrary in any agreement between the agent and that person), on giving notice to 
the Registrar and the other person, cease to act as agent for the other person. 
(3) Rules may authorize the Registrar to refuse to recognize as agent in respect of any business under 
this Ordinance any person specified for the purpose in the rules. 
( 4) The Registrar shall refuse to recognize as an agent a person who neither resides nor has a place 
of business in Hong Kong. Chapt~ 
section; $J4 
141· ·.Till~: 
Hoodfog! PA!blNTSQRDINANCE Cr~ette Numbe:r: IP/N/1/HKG/P/l 
Page 153 
Fa1sifi~a:tfon of register, Vets ion: l)ate: 30/06/t991 
etc. 
PART XVII 
OFFENCES 
A person who-
( a) makes or causes to be made a false entry in any register kept under this Ordinance, knowing 
the entry to be false; or 
(b) makes or causes to be made a writing falsely purporting to be a copy or reproduction of an 
entry in any register kept under this Ordinance, or produces or tenders or causes to be 
produced or tendered in evidence any such writing, knowing the writing to be false, 
commits an offence and is liable-
(i) on summary conviction, to a fine at level 5 and to imprisonment for 6 months; 
(ii) on conviction on indictment, to imprisonment for 2 years. 
[cf. 1977 c. 37 s. 109 U.K.] IP IN/ 1 /HK.GIP I I 
Page 154 
q~pt~n 
Sedi:art:· 514 
142 · l'itlet 
Heading:· PA1ENT:SdRDINAN€E 
Unadfttunzed etairtl ~{ · 
patent rights O.azet1e Numhe.r: 
Versloo Date: J0/0$/1991 
(1) Subject to this section, a person who falsely represents that anything disposed of by him for 
value is a patented product commits an offence and is liable on summary conviction to a fine at level 3. 
(2) For the purposes of subsection (1), a person who for value disposes of an article having stamped, 
engraved or impressed on it or otherwise applied to it the word "patent" or 11patentedn 
or anything expressing or implying that the article is a patented product, shall be taken to 
represent that the article is a patented product. 
(3) Subsection (1) does not apply where the representation is made in respect of a product after the 
patent for that product or, as the case may be, the process in question has expired or been revoked and 
before the end of a period which is reasonably sufficient to enable the accused to take steps to ensure that 
the representation is not made ( or does not continue to be made). 
( 4) In proceedings for an offence under this section it shall be a defence for the accused to prove that 
he used due diligence to prevent the commission of the offence. 
[cf. 1977 c. 37 s. 110 U.K.] Ch~pter:; · 
Seci:fon: 514 
143 ,'.'·','',',,'.'' ••.•·,·, 
· ···11@~frig: PATENTS ORDfNA.NcE.; 
• }fna.ufuotized ~liifuxthat 
patent has been applied for . Gazette Nun1b¢r( .····-·>'.<<_,,_·.;'·:-:.:··.·, '.,'.',','' IP /N/1/HK GIP /1 
Page 155 
Version>Date~ J0/06/1997 
(1) Subject to this section, a person who represents that a patent has been applied for in respect of 
any article disposed of for value by him when in fact-
( a) no such application for a patent has been made; or 
(b) any such application has been withdrawn or deemed withdrawn, 
commits an offence and is liable on summary conviction to a fine at level 3. 
(2) Subsection (l)(b) does not apply where the representation is made (or continues to be made) 
before the expiry of a period which begins with the withdrawal or deemed withdrawal and which is 
reasonably sufficient to enable the accused to take steps to ensure that the representation is not made ( or 
does not continue to be made). 
(3) For the purposes of subsection (1), a person who for value disposes of an article having stamped, 
engraved or impressed on it or otherwise applied to it the words "patent applied for" or "patent pending", 
or anything expressing or implying that an application has been 
made for a patent in respect of the article, shall be taken to represent that an application for such a patent 
has been made. 
( 4) In any proceedings for an offence under this section it shall be a defence for the accused to prove 
that he used due diligence to prevent the commission of such an offence. 
[cf. 1977 c. 37 s. 111 U.K.] IP/N/1/HKG/P /1 
Page 156 
Ch~te-r: .. ·. . >SJ4 
Section:: 144 Tidef. 
Hooding_; PAlBNT:SORDOht\iCH . · >G~tte Nuitd,et; 
.· M~uise••o:f'titi~:~P~t~;ti Vetsk#tDate; S:Qt:M:il997 
Registry" 
A person who uses on his place of business, or any document issued by him, or otherwise, the words 
11Patents Registry" or any other words suggesting that his place of business is, or is 
officially connected with, the Patents Registry, commits an offence and is liable on summary conviction to a 
fine at level 4. 
[cf. 1977 c. 37 s. 112 U.K.] G.n®ter: 
Section: · \$t4 
·145· .·:otf en~es•by•chrp-0r~dons•or·· ¥:ersionDate: 
partners IP/N/1/HKG/P/l 
Page 157 
(1) Where an offense under this Ordinance committed by a body corporate is proved to have been 
committed with the consent or connivance of, or to be attributable to any neglect on the part of, a director, 
manager, secretary or other similar officer of the body, or a person purporting to act in any such capacity, 
he as well as the body corporate is guilty of the offence and liable to be proceeded against and punished 
accordingly. 
(2) The following provisions apply for the purposes of proceedings for an offence under this 
Ordinance alleged to have been committed by a body corporate-
( a) any rules of court relating to the service of documents; 
(b) section 19 A (plea by a corporation before a magistrate) and section 87 (procedure on charge 
of indictable offence against corporation) of the Magistrates Ordinance (Cap 227). 
(3) Where the affairs of a body corporate are managed by its members, subsection (1) shall apply in 
relation to the acts and defaults of a member in connection with his functions of management as if he were a 
director of the body corporate. 
( 4) Where a partnership is guilty of an offence under this Ordinance, every partner, other than a 
partner who is proved to have been ignorant of or to have attempted to prevent the commission of the 
offence, is also guilty of the offence and liable to be proceeded against and punished accordingly. 
( 5) Without prejudice to any liability of the partners under subsection ( 4 ), proceedings for an offence 
under this Ordinance alleged to have been committed by a partnership shall be brought against the 
partnership in the name of the firm and not in that of the partners. 
(6) A fine imposed on a partnership on its conviction in such proceedings shall be paid out of the 
partnership assets. 
(7) Where an offence under this Ordinance committed by a partner in a firm is proved to have been 
committed with the consent or connivance of, or to be attributable to any neglect on the part of, any other 
partner in the firm or any person concerned in the management of the firm, that partner or the person 
concerned in the management of the firm is also guilty of the offence and liable to be proceeded against and 
punished accordingly. IP/N/1/HKG/P/l 
Page 158 
Ctmpwr: 
Se¢tk1rt: 5J4 
.146 Title:··· 
Heading: PAtet-rrs:ORDlNAN:CB 
Correc~fon ot errors: in 
patents and applications Gazette Number: 
VersfooJ)ate~ 30/06l 1997 
PART XVIII 
ADMINISTRATIVE PROVISIONS 
(1) The Registrar may, subject to the rules, correct any error of translation or transcription, clerical 
error or mistake in any specification of a patent or application for a patent or any document filed in 
connection with a patent or such an application. 
(2) Where the Registrar is requested to correct such an error or mistake any person may in 
accordance with the rules give the Registrar notice of opposition to the request and the Registrar shall 
determine the matter. 
[cf. 1977 c. 37 s. 117 U.K.] ()h~tee 
•S~~:tiOO! 5J4··. 
147 Thkt 
• ffoading;: IP/N/1/HKG/P/l 
Page 159 
PATEf.irs O~lNANCE ..... v?<Z¢tte Numbee 
ht(o-rmati~rJl:a:bo't p;a!tnt . Vers.icm 0$~: · 10/06!1997 
appU~tj~11~La,~µ .. ~f~Ut 
and insp~ctio:n · of docum~nts 
( 1) After publication of an application for a standard patent in accordance with section 20 or the 
grant of a short-term patent the Registrar shall upon the filing of a written request in the prescribed manner 
give the person making the request such information, and permit him to inspect such documents, relating to 
the application or any patent granted in pursuance of the application or to the short-term patent as may be 
specified in the request, subject, however, to any prescribed restrictions. 
(2) Subject to this section, until an application for a standard patent is so published or a short-tenn 
patent is granted documents or information constituting or relating to the application for the standard patent 
or the short-term patent shall not, without the consent of the proprietor or the applicant ( as the case may 
be), be published or communicated to any person by the Registrar. 
(3) Subsection (2) shall not prevent the Registrar from publishing or communicating to others any 
prescribed bibliographic information about an unpublished application for a standard patent or an application 
for a short-term patent. 
( 4) Where a person is notified that an application for a standard patent has been made, but not 
published in accordance with section 20, and that the applicant will, if the patent is granted, bring 
proceedings against that person in the event of his doing an act specified in the notification after the 
application is so published, that person may make a request under subsection (1 ), notwithstanding that the 
application has not been published, and that subsection shall apply accordingly. 
(5) Where a person is notified that an application for a short-term patent has been made and that the 
applicant will, if the patent is granted, bring proceedings against that person in the event of his doing an act 
specified in the notification, that person may make a request under subsection (1) and that subsection shall 
apply accordingly. 
( 6) Where an application for a standard patent is filed, but not published, and a new application for a 
standard patent is filed in respect of any part of the subject-matter of the earlier application (either in 
accordance with the rules or in pursuance of an order under section 13) and is published, any person may 
make a request under subsection ( 1) in the prescribed manner relating to the earlier application and the 
Registrar shall give him such information and permit him to inspect such documents as could have been 
given or inspected if the earlier application had been published. 
[cf. 1977 c. 37 s. 118 U.K.] IP/N/1/HKG/P/1 
Page 160 
Chapter; 
Section.: PATENms••oROtNANCE 
Houts·~fbusift~·and· 
excluded days "" ,, , ..... '' 
Version:•Oate: 30lOpll997 
(1) The Registrar may, by notice published in the Gazette, give directions specifying the hours of 
business of the registry for the purpose of the transaction by the public of business under this Ordinance, 
and the days which are business days for that purpose. 
(2) Business done on any day after the specified hours of business, or on a day which is not a 
business day, shall be deemed to have been done on the next business day; and where the time for doing 
anything under this Ordinance expires on a day which is not a business day, that time shall be extended to 
the next business day. 
(3) Directions made under this section may make different provision for different classes of business. Chapter; 
Section: 514.· 
149 Tide~ 
B:eading: PATB}ffS ORDfNANCi 
Rtdcs; . .(kw~eNµttjhen IP/N/1/HKG/P/l 
Page 161 
Ver:~ion Pate: . . 30106/1991 
( 1) The Registrar may make rules-
( a) for the purposes of any provision of this Ordinance authorizing the making of rules ( other 
than rules of court) with respect to any matter; and 
(b) for prescribing anything authorized or required by an provision of this Ordinance to be 
prescribed, 
and generally for regulating practice and procedure under this Ordinance. 
(2) Without prejudice to the generality of subsection (1), rules may make provision-
(a) in connection with applications for patents and other documents which may be filed with the 
Registrar-
(i) prescribing the form and contents of any such documents; 
(ii) requiring copies of such documents to be furnished; 
(iii) prescribing the manner of filing of such documents; 
(b) regulating the procedure to be followed in c01mection with any proceeding or other matter 
before the Registrar or in the registry and authorizing the rectification of irregularities of 
procedure; 
( c) requiring fees to be paid in connection with any such proceeding or matter or in connection 
with the provision of any service by the registry and providing for the remission of fees in 
the prescribed circumstances; 
(d) regulating the mode of giving evidence in any such proceeding·and empowering the Registrar 
to compel the attendance of witnesses and the discovery of and production of documents; 
( e) requiring the Registrar to advertise any proposed amendments of patents and any other 
prescribed matters, including any prescribed steps in any such proceeding; 
( f) providing for the appointment of advisers to assist the Registrar in any proceedings before 
him; 
(g) prescribing time limits for doing anything required to be done in connection with any such 
proceeding by this Ordinance or the rules and providing for the alteration of any period of 
time specified in this Ordinance or the rules; 
(h) giving effect to the right of an inventor of an invention to be mentioned in an application for 
a patent for the invention; 
(i) without prejudice to any other provision of this Ordinance, requiring and regulating the 
translation of documents in connection with a patent or an application for a patent into the 
language of the proceedings or into one or both official languages and the filing and 
verification of any such translations; 
G) providing for the publication and sale of documents by the registry and of information about 
such documents; 
(k) prescribing opposition or revocation proceedings in designated patent offices for the 
purposes of sections 43 and 44. 
(3) Rules may make different provision for different cases. 
(4) Rules made under this section-
(a) authorizing the rectification of irregularities of procedure; or 
(b) providing for the alteration of any period of time, 
may authorize the extension or further extension of any period of time notwithstanding that the period has 
already expired. 
(5) Rules prescribing fees, including any penalty fee under section I04(5)(b), shall not be made 
except with the consent of the Financial Secretary. 
(6) Any rules made under subsection (2)(c) may­
(a) prescribe fees fixed at; or 
(b) provide for fees to be fixed at, 
levels that provide for the recovery of expenditure incurred or likely to be incurred by the Government or 
other authority in the exercise of any or all functions under this Ordinance, and shall not be limited by IP/N/1/HKG/P/1 
Page 162 
reference to the amount of administrative or other costs incurred or likely to be incurred in the exercise of 
any particular function. 
(7) Rules may provide for arrangements to be made by the Registrar for the publication of reports of 
cases relating to patents decided by the Registrar and of cases relating to patents (whether under this 
Ordinance or otherwise) decided by any court or body ( whether in Hong Kong or elsewhere). 
[cf. 1977 c. 37 s. 123 U.K.] Chapter: 
Sectkm: s1~i 
lSO Tide: 
Heading:. PATENTS ORDINANCE . Oar.ette Nurtlber. IP /N/1 /HKG/P /1 
Page 163 
.Registr~r m21y specify forms Version\Date: · .J0#):611997 · . . ·•··• 
to be used 
( 1) The Registrar may require the use of such forms as he may, by notice published in the Gazette, 
specify in connection with the granting of a patent or any other proceeding before him under this Ordinance. 
(2) A notice under subsection (1) may contain any direction of the Registrar with respect to the use 
of a form specified in the notice. IP/N/1/HKG/P/1 
Page 164 
Chapt~r: 
Se~1km: 5J4 
1Sl 'tide: 
Heading~ . . - . . . . 
Or.dhfanceJ~ind:ing on ·· 
Government . . . . . . . -. . . . . 
Versi-Ort Pate:: · 30/0611997 • 
Subject to the prov1s1ons of this Ordinance, and notwithstanding section 5(3) of the Crown 
Proceedings Ordinance (Cap 300), this Ordinance binds the Government. 
[cf. Registration of Patents Ord. s. 7A] Ch~ptet: 
&e<~don: 514 
l5l .. Tide: 
·Heading: PATEN1}} Oltt)lNANCE 
Fod~ited·attie1es Ga:zette N~mbet: IP/N/1/HKG/P/1 
Page 165 
.· Version.Date: 30/Q~/l997 · · .. 
Nothing in this Ordinance affects the right of the Government or any person deriving title directly or 
indirectly from the Government to dispose of or use articles forfeited under the law relating to customs or 
excise. 
[cf. 1977 c. 37 s. 122 U.K.] IP/N/1/HKG/P/1 
Page 166 
Chapter: 
Section: 
Remarks: 514 
153 RATENTS0RDlN.a.NCE GazeJte N~~mbet: 2.2. ofl999 
. · .. ~mer1<!n.ientQfStbedule l \lerskm Date: Qi/07/1997 
Amendments retroactively made -see 22 of 1999 s. 3 
The Chief Executive in Council may by order published in the Gazette- (Amended 22 of 1999 s. 3) 
(a) add to Schedule 1 the name of-
(i) any country which has acceded to the Paris Convention; 
(ii) any country, territory or area which has acceded to the World Trade Organisation 
Agreement; 
(b) delete from the Schedule 1 the name of-
(i) any country which has denounced the Paris Convention; 
(ii) any country, territory or area which has denounced the World Trade Organisation 
Agreement. Chapter: 
Sectfor1; . 514 
154 .ffoadlng: PATENTS OJIDfNANCE 
Jtepeal 
PART XIX Gazette Nurnben IP/N/1/HKG/P/l 
Page 167 
Mer:sion D-ate: 3-0!'06:f:1991 
REPEALS AND TRANSITIONAL ARRANGEMENTS 
(1) The Registration of Patents Ordinance (Cap 42) is repealed. 
(2) The repeal effected by subsection (1) is subject to the following provisions of this Part. IP/N/1/HKG/P/1 
Page 168 
Chapter: 
S~ction:; 514 
155 PATENTS•ORbtNANCE @~etteNitmbet.: .. 
· · · Validity•ofhtsttumenis·. .· Ver~ion: Date: • :30/-06./19.~7 
made otthin~dont nnde:f'.'. 
the repealed Ordinance 
Insofar as any instrument made or other thing done at any time under any provision of the repealed 
Ordinance could have been made or done under a corresponding provision of this Ordinance it shall not be 
invalidated by the repeals made by this Ordinance but shall have effect as if made or done under that 
corresponding provision. Expanded Cross Reference: 
69, 70, 71, 72 Use of:p.a~tded·inventions 
for service of the Crown IP/N/1/HKG/P/l 
Page 169 
3010611997 
(1) Section 7G of the repealed Ordinance ( which deals with the question of acts done by the 
Government as constituting the use of an invention for the services of the Crown, and payment falling to be 
made in respect of any such use) as it applied immediately before the commencement date shall continue in 
force. 
(2) For ease of reference, section 7G of the repealed Ordinance as applying for the purposes of 
subsection (1) is set out in Schedule 2. 
(3) Where a patent for an invention has been granted under this Ordinance pursuant to this Part to 
the proprietor of an existing registered patent for that invention, or to the applicant of a pending application 
for registration of a patent for that invention under the repealed Ordinance, sections 69 to 72 shall apply to 
Government use of such invention during any period of extreme urgency declared under section 68, subject 
to any necessary modifications. <* Note-Exp. x-Ref: Sections 69, 70, 71, 72 *> IP/N/1/HKG/P/l 
Page 170 
Ch~t¢r: 
Secdoi:1~ .. <$14 
l:57 Titl~: 
Heading: 
Expanded Cross Reference: 
73, 74, 75,82,83,84,85,86,87 
( 1) Any question whether an act done before the commencement date infringes an existing registered 
patent shall be determined in accordance with the law relating to infringement in force immediately before 
the commencement date, and sections 6 and 7 of the repealed Ordinance shall apply accordingly. 
(2) Subject to subsection (3) and to necessary modification-
(a) sections 73 to 75, 80, 81, 85 to 87, 89 and 90 shall apply to any act done on or after the 
commencement date which infringes an existing registered patent; and <* Note-Exp. x-Ref: 
Sections73,74,75, 85, 8~87 *> 
(b) sections 82 to 84 shall apply to any such act which infringes an existing registered 1977 Act 
patent, <* Note-Exp. x-Ref: Sections 82, 83, 84 *> 
as those sections apply to infringements of a patent granted under this Ordinance. 
(3) Where an act is commenced before the commencement date and continues to be done on or after 
that date then if that act would not, under the law in force immediately before that day, amount to an 
infringement of an existing registered patent for an invention it shall not amount to an infringement of any 
patent for that invention which may be granted under this Ordinance pursuant to this Part. Qij~pter; 
Section: 
Remarks: :514 
158 Titl~: 
11eaarrig: PATENTS ORDINANCE : 
R,d~ Jffoviding·for 
transitional arrangements IP/N/1/HKG/P/1 
Page 171 
<€azettt>Nu1:nber; 22 ofl,Wt 
Version<Oate: Olf07ll997 
Amendments retroactively made -see 22 of 1999 s. 3 
(I) The Chief Executive in Council may, subject to the approval of the Legislative Council, make 
rules providing for the application of this Ordinance and the continued application of the repealed Ordinance 
to-( Amended 22 of 1999 s. 3) · 
(a) existing registered patents; 
(b) pending applications for registration of a patent under the repealed Ordinance, and patents 
registered pursuant to such applications; 
(c) existing 1949 Act or 1977 Act patents; 
( d) published applications for 1977 Act patents and patents granted after the commencement 
date pursuant to such applications; 
( e) existing applications for 1949 Act patents and patents granted after the commencement date 
pursuant to such applications. 
(2) Without prejudice to the generality of subsection (1 ), rules made under that subsection may 
provide for-
( a) existing registered patents to be treated as standard patents granted under this Ordinance; 
(b) the registration of patents under the repealed Ordinance pursuant to pending applications for 
such registration, and for patents so registered to be treated as existing registered patents; 
( c) the grant of a standard patent to the proprietor of an existing 1949 Act or 1977 Act patent; 
( d) an application for a standard patent by the applicant of a published application for a 1977 
Act patent, and the grant of a standard patent to the proprietor of a patent granted pursuant 
to such an application after the commencement date; 
( e) the grant of a standard patent to the proprietor of a 1949 Act patent granted after the 
commencement date pursuant to an existing application for the 1949 Act patent. 
(3) Rules made under subsection (1) may further provide-
(a) for time limits for making any application for a patent pursuant to rules made under this 
Part; 
(b) for the application of this Ordinance to any patent or application for a patent provided for in 
this Part or in rules made under this Part; 
( c) subject to any rules that may be made under paragraph ( d), that no amendment or 
revocation of an existing registered patent in the United Kingdom taking effect on or after 
the commencement date shall have any effect for the purposes of any patent granted under 
this Ordinance pursuant to this Part, notwithstanding that such amendment or revocation 
may have effect in the United Kingdom as from a date prior to the commencement date; 
( d) for the amendment or revocation of a standard patent for an invention granted under this 
Ordinance pursuant to this Part following the amendment or revocation in the United 
Kingdom of a 1949 Act patent for that invention; 
( e) for modifications to this Ordinance as it is applied for the purpose of any provision of this 
Part; 
( f) for the resolution of questions of priority as between-
(i) 1949 Act patents and patent applications; 
(ii) 1977 Act patents and patent applications; and 
(iii) patents and patent applications under this Ordinance; 
(g) for the transfer to the register kept under this Ordinance of details of patents registered 
under the repealed Ordinance before the commencement date, and for matters connected 
with the keeping of the register in relation to such details, and in that connection rules may 
provide for-
(i) rectification of the register in relation to such details; IP/N/1/HKG/P/1 
Page 172 
(ii) application by any person for the inclusion in the register of such details; 
(h) for the amendment by the Registrar by notice published in the Gazette of any time limit 
specified in, or any Schedule to, such rules. Chapter; 
Se~don: ·.·.5J4 
·1st Title~ 
Heading; . ,,,,' . ·:: 
IJJterpr~tati~·.(Par.tXlX) IP/N/1/HKG/P/l 
Page 173 
• aw~tttNumbir: 
Version Date: 3Qf06/J997 
( 1) In this Part, unless the context otherwise requires-
111949 Act" means the Patents Act 1949 (1949 c. 87 U.K.), and "1949 Act patent" 
means a patent granted under that Act or under the 1977 Act pursuant to an 
application under the 1949 Act; 
111977 Act" means the Patents Act 1977 (1977 c. 37 U.K.), and "1977 Act patent" 
means a patent granted under that Act pursuant to an application made before 
the commencement date and means also a European patent (UK) that has effect in the United 
Kingdom pursuant to section 77 of the 1977 Act; 
"commencement date11 means the date appointed under section 1(2) as being the date on 
which this Ordinance comes into operation; 
"European patent (UK)" means a patent granted under the Convention on the 
Grant of European Patents (European Patent Convention) and designating the United Kingdom; 
"existing 1949 Act or 1977 Act patent" means a 1949 Act 
or 1977 Act patent-
( a) granted before the commencement date and capable as at that date of registration under the 
repealed Ordinance; and 
(b) for which as at the commencement date no valid application for registration under the 
repealed Ordinance had been made; 
"existing application for a 1949 Act patent11 means an application for a 
patent made under the 1949 Act, in respect of which as at the commencement date a patent had not 
been granted; 
"existing registered patent" means a 1949 Act or 1977 Act patent which-
( a) was registered under the repealed Ordinance before the commencement date; and 
(b) at the commencement date-
(i) was still in force in the United Kingdom; 
(ii) had ceased to have effect in the United Kingdom, but subsequently is treated for the 
purposes of the 1977 Act as having never expired; or 
(iii) had ceased to have effect in the United Kingdom but subsequently is restored by an 
order made under the 1977 Act; 
"pending application for registration of a patent under the repealed Ordinance" 
means an application made before the commencement date for 
registration of a 1949 Act or 1977 Act patent under section 3 of the repealed Ordinance, but not as at 
that date registered under the repealed Ordinance; 
"published application for a 1977 Act patent11 means an 
application for a patent-
( a) pursuant to which there could be granted a 1977 Act patent; and 
(b) published before the commencement date, 
and in the case of an international application reference in paragraph (b) to publication shall be read as 
a reference to such publication of the application by a designated patent office as serves to indicate 
that the international application has validly entered its national phase; 
"the repealed Ordinance" means the Registration of Patents Ordinance (Cap 42). 
(2) In this Part, unless the context otherwise requires-
(a) a reference to the registration of a patent under the repealed Ordinance is a reference to the 
issue of a certificate of registration under section 5 of that Ordinance in respect of that 
patent; 
(b) a reference to the repealed Ordinance is a reference to that Ordinance as it applied 
immediately before the commencement date; 
( c) a reference to a patent granted under this Ordinance pursuant to this Part includes a 
reference to a patent treated as so granted. IP IN/ 1 /HK GIP/ l 
Page 174 
Ch~~r: ··514 
Se~tkm: . HiP 
(Omitted as spent) Thlei 
.Heading: .. P.A:tENTS ORDINANCE 
. (Qmi1t,4 as spent) . · {}~t~.Num~r~ 
Mer$i-Ot1 Q~t~; 30/06/1997 Chapter: 
Section: 514 
1.(il 
( Omitted as spent) title: . 
Headfrlg: PNfENTS ORDfN~~CE 
((haitteij :as ~pent) IP/N/1/HKG/P/1 
Page 175 
Ga~t:t~ Number: ·. 
\l¢r~i-0t1 Qate1 JQ/-Ofll:997 IP/N/1/HKG/P/l 
Page 176 
Chapten 
St!ctb>n; 
(Omitted as spent) Tide: 
f:fea.dMl~ .. PATEhr:I'S OR:QlNANCE 
(Omitte~tas.~pent). Oamtte.Number~ 
Vers.km:IT)ate: · Ch~r:· .•.$14 
S~<;ti~Q; }~$ 
(Omitted as spent) ·Title; 
Heading~. PATENTS QrulfNANCE 
((;)ndtt~ afspJJlft ... :tiazette Numb¢r.; IP/N/1/HKG/P/l 
Page 177 
·. · Vetsiort Date~ 3Q{Oi/l9:97. IP/N/1/HKG/P/l 
Page 178 
Chapter: Titl¢:. fN1$NTSQRQtN~NCE GazetttJiumber: t..:N. S4J .<.of 
.··.··PARi$€01N¥ENTIQN·· .. · 
COU~:ES.~1.1t~ 
~tEM:BER COUNTRIES, 
TERRITORIES AND AREAS 
Paris Convention countries t99S 
·. 06!U/t9~8: 
[ sections 2 & 153] 
The following are specified for the purposes of the definition of "Paris Convention countryn in section 
2(1) as countries which have acceded to the Paris Convention-
Albania 
Algeria 
Argentina 
Armenia 
Australia 
Austria 
Azerbaijan 
Bahamas 
Bahrain (Added L.N. 341 of 1998) 
Bangladesh 
Barbados 
Belarus 
Belgium 
Benin 
Bolivia 
Bosnia and Herzegovina 
Botswana (Added L.N. 341 of 1998) 
Brazil 
Bulgaria 
Burkina Faso 
Burundi 
Cambodia (Added L.N. 341 of 1998) 
Cameroon 
Canada 
Central African Republic 
Chad 
Chile 
China 
Colombia 
Congo 
Costa Rica 
Cote d'Ivoire 
Croatia 
Cuba 
Cyprus 
Czech Republic 
Democratic People's Republic of Korea 
Democratic Republic of Sao Tome and Principe (Added L.N. 341 of 1998) 
Democratic Republic of the Congo (Added L.N. 341 of 1998) 
Denmark Dominican Republic 
Egypt 
El Salvador 
Equatorial Guinea 
Estonia 
Finland 
France 
Gabon 
Gambia 
Georgia 
Germany Ghana Greece 
Grenada (Added L.N. 341 
of 1998) 
Guatemala (Added L.N. 341 of 1998) 
Guinea 
Guinea-Bissau 
Guyana 
Haiti 
Holy See 
Honduras 
Hungary 
Iceland 
Indonesia 
Iran (Islamic Republic ot) 
Iraq 
Ireland 
Israel 
Italy 
Japan 
Jordan 
Kazakhstan (Added L.N. 341 of 1998) 
Kenya 
Kyrgyzstan 
Latvia 
Lebanon 
Lesotho Liberia 
Libya 
Liechtenstein 
Lithuania 
Luxembourg 
Madagascar 
Malawi 
Malaysia 
Mali 
Malta 
Mauritania 
Mauritius 
Mexico 
Monaco 
Mongolia 
Morocco 
Nether lands 
New Zealand IP/N/1/HKG/P/1 
Page 179 IP/N/1/HKG/P/l 
Page 180 
Nicaragua 
Niger 
Nigeria Norway 
Panama 
Paraguay 
Peru 
Philippines 
Poland Portugal 
Republic 
of Korea 
Republic of Moldova 
Republic of Mozambique (Added L.N. 341 of 1998) 
Romania 
Russian Federation 
Rwanda 
Saint Kitts and Nevis 
Saint Lucia 
Saint Vincent and the Grenadines 
San Marino 
Senegal 
Sierra Leone 
Singapore 
Slovak Republic (Added L.N. 341 of 1998) 
Slovenia 
South Africa 
Spain 
Sri Lanka 
Sudan 
Suriname 
Swaziland 
Sweden 
Switzerland 
Syria 
Tajikistan 
The former Yugoslav Republic of Macedonia 
Togo 
Trinidad and Tobago 
Tunisia 
Turkey 
Turkmenistan 
Uganda 
Ukraine 
United Arab Emirates 
United Kingdom 
United Republic of Tanzania 
United States of America 
Uruguay 
Uzbekistan 
Venezuala 
Viet Nam 
Yugoslavia 
Zambia 
Zimbabwe WTO member countries, territories 
and areas (not including Paris 
Convention countries) IP /N/1/HKG/P /1 
Page 181 
The following are specified as being countries, territories or areas which have acceded to the World 
Trade Organisation Agreement-
Angola 
Antigua and Barbuda 
Belize 
Brunei Darussalam 
Djibouti 
Dominica 
Ecuador 
European Community 
Fiji 
India 
Jamaica 
Kuwait Macau 
Maldives 
Myanmar 
Namibia 
Pakistan 
Papua New Guinea 
Qatar 
Solomon Islands 
Thailand 
(Amended L.N. 
341 of 1998) IP/N/1/HKG/P/1 
Page 182 
C.r: 
Sch~4ule; PAT$NTSC?R0INANCE. ·. .. Ga.z~tteNtimbet: 
. :REOIST~TIQN ()R Version Date~ 30!06/l99% 
· JM{fENT$.QRDU'i:t-\NC£ 
[section 156(2)] 
Section 7G of the Registration of Patents Ordinance (Cap 42) as applying for the purposes of section 
156( 1) of this Ordinance reads-
"7G. Transitional 
( 1) Any question whether-
( a) an act done before the commencement date by the Government or a person 
authorized by the Governor under section 7B, as it read immediately before the 
commencement date, constitutes the use of a patented invention for the services of the 
Crown, or 
(b) any payment falls to be made in respect of any such use (whether to a person entitled 
to register a patent for the invention, to the patentee or to an exclusive licensee), 
shall be determined in accordance with sections 7B to 7D as they read immediately before the 
commencement date. 
(2) Where an act is begun before the commencement date and continues to be done on or after that 
date, then, if that act would under the law in force immediately before that date constitute use of a patented 
invention for the services of the Crown, its continuance shall constitute Crown use under this Ordinance and 
shall not constitute an infringement. 
(3) In this section, ncommencement date" means the date on which section 11 of the Intellectual 
Property (World Trade Organization Amendments) Ordinance 1996 (11 of 1996) comes into operation.".