### Patents Ordinance 《專利條例》

133. Procedure in case of option to apply to court or Registrar
(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]

134. Burden of proof in certain 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.]

135. Exercise of Registrar’s discretionary powers
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.]

### Patents Ordinance 《專利條例》

136. Costs and expenses in proceedings before court
(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. (Amended 2 of 2001 s. 10)
(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.]

137. Costs and expenses in proceedings before Registrar
(1) 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.]

### Patents Ordinance 《專利條例》

138. Licences granted by order of the court or Registrar or by Director of Health
(Amended 21 of 2007 s. 6)(1) Any order for the grant of a licence under section 14, 37K, 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. (Amended 21 of 2007 s. 6; 17 of 2016 s. 125)
(2) Without prejudice to any other method of enforcement, any import compulsory licence or export compulsory licence granted under section 72C or 72M (as the case may be) has effect as if it were a deed, executed by the proprietor of the standard patent or the short-term patent (as the case may be) and all other necessary parties. (Added 21 of 2007 s. 6)
[cf. 1977 c. 37 s. 108 U.K.]

139. Immunity of Registrar as 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.]

139A. Protection of Government and public officers
(1) No liability shall rest on the Government or any public officer by reason of the fact that—
(a) any authority is given under section 69; or
(b) any import compulsory licence or export compulsory licence is granted under section 72C or 72M (as the case may be).
(2) A public officer is not personally liable in respect of any act or omission of his if it was done or made by him in the honest belief that it was required or authorized in the exercise of any function, duty or power of his under Part 9, 9A or 9B (as the case may be). (Amended 17 of 2016 s. 126)
(3) The protection conferred on public officers by subsection (2) in respect of any act or omission does not affect any liability of the Government in tort for that act or omission.
(Added 21 of 2007 s. 7)

### Patents Ordinance 《專利條例》

140. Recognition of agents
(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.

141. Falsification of register, etc.
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.]