WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects of 
Intellectual Property Rights IP/N/IIHKGIPI7 
31 January 2003 
(03-0653) 
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 textl of the Judgement of the Court of Final Appeal of 
the Hong Kong Special Administrative Region Final Appeal No. 11 of 2002 (Civil) concerning 
certain sections of the Patents (General) Rules, as notified by Hong Kong, China under Article 63.2 of 
the Agreement (see document IPIN/lIHKG/3). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETlt INTELLECTUELLE NOTIFIEES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
HONG KONG, CHINE 
Le present document contient le textel du jugement de la Cour d'appel en dernier ressort de la 
Region administrative speciale de Hong Kong, Appel en dernier ressort nO 11 de 2002 (au civil) 
concernant certaines sections des Regles relatives aux brevets (dispositions generales), notifie par 
Hong Kong, Chine au titre de l'article 63:2 de l'Accord (voir le document IPINIlIHKG/3). 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIP ALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL PA.RRAFO 2 
DEL ARTicULO 63 DEL ACUERDO 
HONG KONG, CHINA 
En el presente documento se reproduce el textol de la Sentencia del Tribunal de Apelacion en 
(J1tima Instancia de la Region Administrativa Especial de Hong Kong, China, Apelacion en ultima 
instancia N° 11 (Civil) de 2002, sobre determinados articulos del Reglamento (General) de Patentes, 
notificado por Hong Kong, China en virtud del parrafo 2 del articulo 63 del Acuerdo (vease el 
documento IPINIlIHKG/3). 
1 In English only'/En anglais seulement.lEn ingles solamente. IPIN/l/HKG/P/7 
Page 2 
F ACVOOOOl112002 
FACV No. 11 of2002 
IN THE COURT OF FINAL APPEAL OF THE 
HONG KONG SPECIAL ADMINISTRATIVE REGION 
FINAL APPEAL NO. 11 OF 2002 (CIVIL) 
(ON APPEAL FROM CACV NO. 186 OF 2002) 
Between: 
MERCK SHARP & DOHME LIMITED Appellant 
AND 
THE REGISTRAR OF PATENTS Respondent 
Court: Mr Justice Bokhary PJ, Mr Justice Chan PJ, Mr Justice Ribeiro PJ, Mr Justice 
Silke NPJ and Lord Millett NPJ 
Date of Hearing: 25 November 2002 
Date of Judgment: 5 December 2002 
JUDGMENT 
Mr Justice Bokhary P J: 
1. I agree with the judgment of Mr Justice Ribeiro P J. Mr Justice Chan PJ: 
2. I agree with the judgment ofMr Justice Ribeiro PJ. 
Mr Justice Ribeiro PJ: IPINII/HKG/PI7 
Page 3 
3. ill this appeal, it falls to be considered whether certain sections ofthe Patents 
(General) Rules ("the Rules") are ultra vires. The relevant provisions are those which 
lay down a one month time-limit for effecting registration of a court order for 
amendment ofa patent made under s 46 of the Patents Ordinance, Cap 514 ("the 
Ordinance") and which preclude the Registrar of Patents ("the Registrar") from 
granting any extension oftime for registration. They are s 39(1) and that part of s 
100(2) of the Rules which refers to s 39(1) (together "the relevant rules"). 
The fa cts 
4. A pharmaceutical patent, namely, European Patent Publication No. EP 0411 668 
("the European Patent"), was filed by the appellant, a United Kingdom company, at 
the European Patent Office on 3 August 1990. 
5. On 1 March 1995, the European Patent Office granted the European Patent with the 
United Kingdom as the designated country. 
6. On 29 November 1995, Rotta Research Laboratorium S.p.A. ("Rotta") lodged an 
opposition to the European Patent on the ground, inter alia, that it was anticipated. 
7. An application (no. 96002052) was filed to register the European Patent in Hong 
Kong on 17 December 1996. It was registered as Patent No 81 of 1997 ("the Hong 
Kong Patent"). By virtue of s 3(1) of the Patents (Transitional Arrangements) Rules, 
the Hong Kong Patent is a "deemed standard patent" and is deemed to have been filed 
in Hong Kong on 3 August 1990. The actual date of registration in Hong Kong was 
16 January 1997. 
8. As a result of the opposition proceedings initiated by Rotta, the European Patent's 
specification was substantially amended. A substantive amendment was made to its 
Claim 1 and its Claims 2 to 6 inclusive were deleted. On 18 March 1998, the 
Opposition Division of the European Patent Office decided to maintain the European 
Patent as so amended. 
9. Where opposition or revocation proceedings result in the designated patent's 
specification being amended in the designated patent office, s 43 of the Ordinance 
places a duty on the proprietor of a Hong Kong patent granted on the basis of the 
designated patent to take steps to have the Hong Kong patent amended in like manner. 
He is required to file the amended specification with the Patents Registry and, upon 
the Registrar recording the amendment in the register, the Hong Kong patent is treated 
in law as having been duly amended. IP/N/1/HKG/PI7 
Page 4 
10. Agents acting on the appellant's behalf accordingly wrote to the Registrar on 25 
February 1999, giving notice that the European Patent had been amended as a result 
of opposition proceedings and requesting a corresponding amendment to the Hong 
Kong Patent pursuant to s 43. 
11. The Registrar replied on 3 March 1999, stating that s 43 was inapplicable to the 
Hong Kong Patent by virtue of the transitional provisions contained in s 3(2) and 
Schedule 1 of the Patents (Transitional Arrangements) Rules. It was suggested that 
the appellant should apply to the court for amendment under s 46 of the Ordinance. 
12. It was not until 21 March 2001, some two years later, that an Originating Motion 
(HCMP 1626/2001) was filed with a view to amending the Hong Kong Patent 
pursuant to s 46. However, nothing has turned on the evident delay. 
13. The matter came before Madam Justice Yuen who, on 10 October 2001, acceded 
to the application, noting that the amendment was sought in order to make the Hong 
Kong Patent correspond with the European Patent as amended. Her Ladyship 
ordered :-
" ...... that the Registrar of Patents amend the specification of Patent No. 
81 of 1997 so that Claim 1 shall be deleted and there shall be 
substituted therefor a fresh Claim 1 as set out in a schedule, which 
schedule follows the wording of the amended European (OK) Patent, 
and secondly that Claims 2 to 6 inclusive of the specifications and the 
sections headed 'Revendications' and 'Patentanspruche' shall be 
deleted." 
14. Delays in the filing of notice ofYuen J's order then ensued. The draft order was 
not approved by the court until 22 October 2001 and was not sealed until 29 October. 
The sealed order was then apparently sent to Jersey in the Channel Islands and 
subsequently returned with the documentation needed for filing with the Registrar. It 
was only on 12 November 2001 that notice of the order was filed at the Patents 
Registry, together with a stamped Patents Registry Form P8. 
Refusal of registration 
15. Section 39(1) of the Rules is in the following terms :-
"The proprietor of a patent in respect of which the specification has 
been amended by court order under section 46 of the Ordinance shall, 
within 1 month of the making of such a court order, file with the 
Registrar notice of such amendment. n 
16. In the light of this rule, the Registrar concluded that the filing was two days out of 
time and, by letter dated 7 December 2001, refused registration, adding that 
consideration should be given to applying to the court to extend the time limit. 
17. The latter suggestion was presumably made on account of s 100 of the Rules, 
which precludes the Registrar himself from granting any time extension in respect of s 
39(1) filings. Section 100 provides as follows :-IPINIlIHKG/P/7 
Page 5 
"(1) The times or periods prescribed by these Rules for doing any act 
or taking any proceeding under the Rules, other than times or periods 
prescribed in the provisions mentioned in subsection (2), may be 
extended by the Registrar ifhe thinks fit, upon such notice to the 
parties and upon such terms as he may direct; and such extension may 
be granted even though the time or period for doing such act or taking 
such proceeding has expired. 
(2) The provisions referred to in subsection (1) are sections ...... [inter 
alia] 39(1) ..... " 
The decisions below 
18. The appellant applied to Madam Justice Kwan for an extension oftime for filing 
notice ofYuen J's order (see [2002] 2 HKC 475). It was argued that the court had 
power to extend time by virtue of 0 3 r 5 of the High Court Rules or in its inherent 
jurisdiction. Kwan J rejected those arguments. Although her Ladyship stated that she 
was inclined to exercise her discretion in favour of extending time, she held that there 
was no jurisdiction to do so. 
19. The appellant took the matter on appeal (see [2002] 2 HKC 482), advancing the 
same arguments based on 0 3 r 5 and the inherent jurisdiction. The Court of Appeal 
agreed with Kwan J's reading of ss 39(1) and 100(2) of the Rules and held that the 
court lacked jurisdiction to extend time. The appellant also sought to argue that for the 
purposes of s 39(1), the court should treat Yuen J's order as having been made on 29 
October, the date when it was sealed, so that notice was tendered for filing within 
time. That argument also failed. The Court of Appeal held that the date of "the 
making" of the court order in s 39(1) meant the date the order was pronounced; 
namely, 10 October 2001. The appeal was therefore dismissed. 
The application for leave to appeal 
20. On the application for leave to appeal to this Court, two developments occurred. 
First, the Registrar, who had previously not taken any part in the proceedings, applied 
to be joined as a party. This was no doubt in deference to certain remarks (which I 
would endorse) made by Rogers VP in the Court of Appeal as to the desirability of the 
Registrar exercising the right of audience granted to him by s 131 of the Ordinance 
where points of principle may arise. 
21. Secondly, the parties were invited, prior to the hearing, to address the Appeal 
Committee as to whether an issue arose as to the vires of the relevant rules. 
22. After hearing argument, the Appeal Committee ordered that the Registrar be 
joined as a respondent and granted leave to appeal on the basis, inter alia, ofthe ultra 
vires question. IPIN/l/HKGIP17 
Page 6 
The status of the Hong Kong Patent 
23. The position resulting from the events described above is highly unsatisfactory in 
two respects. The first relates to the status of the Hong Kong Patent and the second, to 
the status ofthe order of the court made by Yuen J. 
24. Hong Kong does not operate an independent patent examination office to 
determine the patentability of any invention. Instead standard patents are granted in 
reliance upon and reflecting grants made by the patent offices designated under s 8 of 
the Ordinance, including the European Patent Office. While, as Rogers VP pointed 
out in the Court of Appeal ([2002] 2 HKC 483, para 5), once the grant has been 
perfected, a Hong Kong patent acquires a legal life of its own, it remains true that 
during the process of grant, the nature and scope of the Hong Kong patent to be 
granted is determined by and co-extensive with the designated patent upon which it is 
based. 
25. Thus, prior to grant, s 31(2) of the Ordinance prohibits any amendment to the title, 
abstract, or any claim or drawing in the pending application for a standard patent 
unless a like amendment has been made to the corresponding application for a 
designated patent. 
26. Moreover, as noted above, if the specification of the corresponding designated 
patent in respect of a standard patent granted in Hong Kong has (whether before or 
after the Hong Kong grant) been amended in the designated patent office following 
opposition or revocation proceedings, s 43 ofthe Ordinance places the proprietor of 
the Hong Kong patent under a duty to file a verified copy ofthe amended 
specification and requires the Registrar to effect a corresponding amendment to the 
Hong Kong patent. 
27. Mr Justice Sakhrani, in Intel Corporation v Via Technologies Inc (Unreported, 
HCA 4265/2001,30 July 2002), stated the position thus :-
"The only instance in which revocation or amendment of a designated 
patent takes effect in Hong Kong is where a designated patent granted 
in the European or Chinese Patent Offices is revoked or amended 
following prescribed opposition or revocation proceedings as defined 
in section 2(1) of the Patents Ordinance and section 54 of the Patents 
(General) Rules. These relate to post-grant revocation or opposition 
proceedings. Those proceedings, although instituted after the grant of 
the patent, are in fact part of the process of the grant in those two 
designated patent offices. Any patent revoked in such proceedings is 
therefore treated as though it had never been granted and any patent 
amended in them is treated as though it had been granted in the 
amended form. That being so, the proprietor must apply to revoke or 
amend the standard patent as the case may be (sections 43 and 44 of 
the Patents Ordinance) and the Court has a corresponding power to 
revoke following such proceedings (section 91(1)(i) of the Patents 
Ordinance). " 
See also Pendleton, Garland and Margolis, The Law of Intellectual and Industrial 
Property in Hong Kong, Butterworths, Voll, para V[853]. IPINI1 IHKG/PI7 
Page 7 
28. The present case is of course one which, but for the transitional provisions 
mentioned above, would fall squarely within s 43, making an amendment to 
hannonise the Hong Kong Patent with the amended European Patent mandatory. 
29. Instead, because the appellant's attempt to register the amendment failed as a 
result of non-compliance with the immovable time-limit imposed by the relevant rules, 
the specification of the Hong Kong Patent in our register continues to mirror that of 
the unamended European Patent even though the latter no longer exists and cannot 
provide any basis for grant of the Hong Kong Patent as registered. The entry in the 
register is therefore misleading, a situation not conducive to the public interest. 
The status of Yuen J's order 
30. Equally unsatisfactory is the status ofYuen J's order. In making that order, her 
Ladyship directed the Registrar to .amend the Hong Kong Patent in the terms specified. 
The Registrar has, however, refused to give effect to that order, founding his refusal 
on the relevant rules, which were in fact promulgated by him. That such should be the 
resultant legal position is startling. 
31. This is particularly so since s 51(9) of the Ordinance makes it clear that the 
register is only "prima facie evidence of anything required or authorized by this 
Ordinance to be registered". In relation to orders for amendment made under s 46, the 
court's making of the order is the legally operative act which, by virtue of s 46(3), is 
deemed to take effect from the date of the grant. Entry of that order on the register is 
merely the means for publishing and providing prima facie evidence of the fact of 
such amendment. It follows that from the date of pronouncement ofYuen J's order, 
the Hong Kong Patent's specification had been amended as a matter of law. Yet, 
applying the relevant rules, registration of that order has been refused, providing a 
second reason for regarding the register as misleading. 
Ultra vires 
32. There is no doubt that if, in purporting to make subordinate legislation, a public 
authority acts beyond the powers conferred by the enabling Ordinance, such 
legislation may be struck down by the courts as ultra vires and of no legal effect: see, 
for example, Hoffmann-La Roche & Co A G v Secretary of State for Trade and 
Industry [1975] AC 295, per Lord Diplock at 365. 
33. In my view, s 39(1) of the Rules and such part of s 100(2) of the Rules as refers to 
s 39(1), are patently ultra vires. 
"Rules of court" 
34. This is firstly because the rule-making power relating to s 46 applications and 
orders is not given to the Registrar but to the Rules Committee of the High Court. IPINIlIHKG/PI7 
Page 8 
35. Section 46 of the Ordinance is materially in the following terms :-
"General power to amend specification after grant 
(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) ..... . 
(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) ..... . 
(5) Upon receipt ofthe court order and supporting documents filed in 
the prescribed manner the Registrar shall record the amendments to the 
specification ofthe patent and shall publish this and advertise the fact 
by notice in the Gazette. 
(6) ..... . 
(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. " 
36. It is clear that s 46 contains its own specific provisions for the making of rules to 
deal with matters falling within its compass. Thus, s 46(7) expressly provides for the 
making of rules for giving effect to any order of the court made upon a s 46 
application. It is a power clearly covering such matters as the setting of time limits for 
the filing of such orders. Crucially, it provides for such rules to be "rules of court" 
(not rules made by the Registrar. 
37. Section 2(1) of the Ordinance defines "court" as "the Court of First Instance". It 
follows that the "rules of court" contemplated by s 46(7) are the rules regulating the 
practice and procedure of the Court of First Instance made under s 54 of the High 
Court Ordinance, Cap 4, by the Rules Committee constituted under s 55 ofthat 
Ordinance. The s 54 rule-making powers are plainly apt to cover the rules of court 
envisaged under s 46 of the Ordinance. 
(a) Thus, s 54(1) provides :-
"The Rules Committee constituted under section 55 
may make rules of court regulating and prescribing the 
procedure (including the method of pleading) and the 
practice to be followed in the High Court in all causes 
and matters whatsoever in or with respect to which the 
High Court has jurisdiction (including the procedure 
and practice to be followed in the Registries of the High 
Court) and any matters incidental to or relating to that 
procedure or practice. " -(b) Section 54(2)(i) adds :-
"Without prejudice to the generality of subsection (1), 
rules of court may be made for the following 
purposes ...... (i) regulating matters which could 
heretofore be or which have heretofore been provided 
for or regulated by rules of court; ...... " IP /N/l/HK GIP /7 
Page 9 
38. It follows that in purporting to make the relevant rules with a view to regulating 
how s 46 orders are carried into effect, the Registrar was assuming powers which the 
legislature had not given him. He was therefore acting ultra vires. 
39. This conclusion is reinforced by s 149(1)(a) of the Ordinance, which relevantly 
provides :-
"(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 
) . h " court WIt respect to any matter; ..... . 
40. The Registrar is accordingly given power to make rules "other than rules of court". 
It is therefore made abundantly clear that he is not to have any power to make rules of 
court, such as those envisaged under s 46(7) of the Ordinance. 
"Upon receipt" 
41. The second reason why the relevant rules are ultra vires is that they are 
inconsistent with the terms ofs 46(5) of the Ordinance. 
42. As noted above, the court is empowered by s 46(1) to amend the patent's 
specification and, once ordered, s 46(3) deems the amendment to take effect as from 
the grant of the patent. When the order is tendered for filing, the Registrar's duty, 
specified by s 46(5), is as follows :-
"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." 
43. ill the present case, Yuen J's order and supporting documents were submitted on 
12 November 2001 for registration, accompanied by the Patent Registry's Patents 
Form 8. As appears from references to s 46 on the face of the Form, it was the 
administratively "prescribed manner" then adopted by the Patent Registry for the 
filing of s 46 orders. 
44. Section 46(5) therefore required the Registrar to record the amendments and to 
place a notice in the Gazette publishing and advertising such amendments "upon 
receipt" of the documents on 12 November 2001. The Registrar's role in this context 
is purely administrative. He has no discretion. Nothing in the Ordinance gives him 
power to qualify the duty placed on him. IPINI1/HKGIP17 
Page 10 
45. Yet, it is precisely such a qualification that the relevant rules seek to import. They 
unlawfully purport to allow the Registrar to refuse to register the court's amending 
order "upon receipt" on the ground that such receipt occurred after expiry of a self­
imposed time limit which, to make matters worse, has been made incapable of 
extension. The relevant rules are accordingly, for this additional reason, ultra vires 
and of no legal effect. 
The Registrar's position 
46. In the printed Case filed on behalf of the Registrar, the Court was informed that 
the Registrar and the supervising policy Bureau have caused draft amending 
subsidiary legislation (LN 157 of2002) to be tabled before the Legislative Council 
with a view to removing the time-limit imposed by s 39(1) and to amending s 100(2) 
by deleting reference to s 39(1). The Registrar nevertheless sought, in his Case, to 
uphold the decisions below and to maintain that the relevant rules are intra vires. 
47. However, at the commencement of this appeal, Mr Martin Liao, counsel instructed 
for the Registrar, informed the Court that the Registrar now accepts that he cannot 
justify retaining the time-limit laid down by the relevant rules and concedes that those 
provisions are ultra vires. The Registrar properly acknowledges that he has a duty to 
ensure the correctness of the Register and that the relevant time-limits are not 
conducive to that duty. He appropriately considers that he should in any event seek to 
have them formally expunged by amending legislation. 
48. As I am of the opinion that subordinate legislation should be declared ultra vires 
and that the appeal should be allowed on a ground not previously raised, I have set out 
above the basis for my conclusion that the Registrar's concession is rightly made. 
49. I would accordingly declare s 39(1) and that part ofs 100(2) which refers to s 39(1) 
ultra vires and of no kgal effect. I would also direct the Registrar to record the 
amendments to the specification of the Hong Kong Patent pursuant to s 46 of the 
Ordinance, in accordance with the order ofYuen J dated 10 October 2001. It is 
unnecessary to deal with the other grounds relied on by the appellant. 
50. The Court had previously been informed by Mr Stephenson that he was appearing 
on the appellant's behalf on a complimentary basis. He did, however, seek an order for 
costs to cover disbursements, quantified at $18,000.00. Mr Liao submitted that there 
should be no order as to costs. I consider that in the circumstances, the appellant 
should have an order for costs in its favour in the sum of$18,000.00, to be paid 
forthwith. 
Future applications under s 46 
51. It is to be hoped that the Rules Committee will in due course formulate 
appropriate rules of court to deal with applications and orders made under s 46 of the 
Ordinance. IPIN/lIHKG/P/7 
Page 11 
52. In the meantime, a court making such an order should consider whether any 
ancillary directions regarding its implementation should be given. It may, for example, 
consider directing that notice of its order amending the patent should be filed at the 
Patents Registry within a stated period, giving the parties to the proceedings and the 
Registrar (whether or not a party to the proceedings) leave to apply to the court for 
any further directions relevant to implementation of its order. 
Mr Justice Silke NPJ: 
53. I agree. 
Lord Millett NP J: 
54. I agree. 
Mr Justice Bokhary PJ: 
55. The Court unanimously allows the appeal, directs the Registrar to record the 
amendments to the specification of the Hong Kong Patent pursuant to s 46 of the 
Ordinance and awards the appellant costs in the sum 0[$18,000 to be paid forthwith. 
(Kemal Bokhary) 
Permanent Judge 
(William Silke) 
Non-Permanent Judge 
Representation: (Patrick Chan) 
Permanent Judge (R A V Ribeiro) 
Permanent Judge 
(Lord Millett) 
Non-Permanent Judge 
Mr Paul Stephenson (instructed by Messrs Horvath & Giles) for the appellant 
Mr Martin Liao (instructed by the Department of Justice) for the respondent 
(month=12-2002)