PART I
PRELIMINARY (Omitted as spent) Section: | 2 | Interpretation | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
- (1) In these Rules, unless the context otherwise requires"application number" (申請編號) means-
- (a) in relation to an application for a designated patent or a patent granted in pursuance of such an application, the number assigned by the designated patent office upon the filing of that application;
- (b) in relation to an application for a patent under the Ordinance or a patent granted in pursuance of such an application, the number assigned by Registrar upon the filing of that application; "digital signature" (數碼簽署) has the meaning assigned by section 2(1) of the Electronic Transactions Ordinance (Cap 553); (L.N. 37 of 2004) "electronic record" (電子紀錄) has the meaning assigned by section 2(1) of the Electronic Transactions Ordinance (Cap 553); (L.N. 37 of 2004) "electronic signature" (電子簽署) has the meaning assigned by section 2(1) of the Electronic Transactions Ordinance (Cap 553); (L.N. 37 of 2004) "European Patent Office" (歐洲專利局) means the office of that name of the European Patent Organization established by the Convention on the Grant of European Patents done at Munich on 5 October 1973; "information system" (資訊系統) has the meaning assigned by section 2(1) of the Electronic Transactions Ordinance (Cap 553); (L.N. 37 of 2004)
"International Patent Classification" (國際專利分類法) means the system of common classification for patents for inventions provided for under the Agreement concerning the International Patent Classification done at Strasbourg on 24 March 1971, as revised or amended from time to time; (L.N. 37 of 2004)
"publication number" (發表編號) means- - (a) in relation to a document published under the Ordinance, the number assigned to the document by the Registrar upon its publication;
- (b) in relation to a document published under the laws of a patent office outside Hong Kong or under any international convention, the number assigned to the document upon its publication by that patent office or under that convention;
"send" (送交) includes give, and cognate expressions are to be construed accordingly; (L.N. 37 of 2004) "State Intellectual Property Office" (國家知識產權局) means the State Intellectual Property Office established under the laws of the People's Republic of China the functions of which include the granting of patents for inventions; (2 of 2001 s. 17) "United Kingdom Patent Office" (聯合王國專利局) means the office established under the laws of the United Kingdom for the granting of patents for inventions.
(2) In these Rules- - (a)
- (Repealed L.N. 37 of 2004)
- (b)
- reference to the filing of a document or other thing with the Registrar, or reference to the filing of a document or other thing without an indication of the place at which or person with whom it is to be filed, shall be construed as a reference to the filing of the document or thing with the Registrar in accordance with sections 93, 93A, 93B and 93C; (L.N. 37 of 2004)
- (c)
- reference to a document in any proceedings before the Registrar being in the specified form is to be construed as a reference to the document being in such form, if any, as may be specified by the Registrar under section 150 of the Ordinance in connection with those proceedings.
(2 of 2001 s. 17)
A requirement to use a specified form is satisfied by the use of either—
(a) a replica of the specified form; or
(b) a form acceptable to the Registrar, that contains the information required by the specified form and complies with any directions of the Registrar as to the use of the specified form or replicas of it.
(L.N. 37 of 2004)
PART II
APPLICATIONS FOR STANDARD PATENTS
Right to apply
(1) A reference to the Registrar under section 13(1)(a) or (b) of the Ordinance shall— - (a)
- be in the specified form;
- (b)
- be accompanied by a statement setting out fully the nature of the question, the facts upon which the person making the reference relies and the order or relief sought; and
- (c)
- be accompanied by the prescribed fee.
- (2)
- In the case of a reference under section 13(1)(a) of the Ordinance, the person making the reference shall, at the same time as he files it, send a copy of the reference and statement to each of the following persons (not being a party to the reference)—
- (a)
- each person who is alleged in the reference to be entitled to apply for the grant of a standard patent for the invention that is the subject of the reference;
- (b)
- each person whom the person making the reference believes to be the inventor or joint inventor of that invention; and
- (c)
- if an application for a standard patent for that invention has been published before the reference is filed, each person who is shown in the register as having a right in or under that application.
- (3)
- In the case of a reference under section 13(1)(b) of the Ordinance, the person making the reference shall, at the same time as he files it, send a copy of the reference and statement—
- (a)
- to each joint proprietor who is not a party to the reference and who has not otherwise indicated his consent to the making of the order or the granting of the relief sought;
- (b)
- to each of the following persons (not being a party to the reference)—
- (i)
- each person to whom it is alleged in the reference any right in or under the application should be transferred or granted; and
- (ii)
- each person whom the person making the reference believes to be the inventor or joint inventor of the invention that is the subject of the reference; and
- (c)
- if an application for a standard patent for that invention has been published before the reference is
filed, to each person who is shown in the register as having a right in or under that application. - (4)
- The person making the reference shall attach to each copy of the reference and statement he sends under subsection (2) or (3), as the case may be, a notice containing the names and addresses of all persons to whom a copy of the reference and statement is being sent under that subsection, and he shall notify the Registrar of the names and addresses of those persons.
- (5)
- In addition, if an application for a standard patent for the invention that is the subject of a reference under section 13(1)(a) or (b) of the Ordinance has been filed but the application has not been published before the reference is filed, the Registrar shall send a copy of the reference and statement to each of the following persons (not being a party to the reference or a person to whom copies have been sent under subsection (2) or (3), as the case may be)—
- (a)
- each person who is an applicant for the standard patent; and
- (b)
- each person who has given notice to the Registrar under section 46 of a transaction, instrument or event in relation to that application.
- (6)
- The Registrar shall send a notice containing the names and addresses of all persons to whom copies of the reference and statement have been sent under subsection (5) to—
- (a)
- each person to whom copies have been sent under that subsection;
- (b)
- the person making the reference; and
- (c)
- each person whose name and address has been notified to the Registrar under subsection (4).
- (7)
- Any person who is sent a copy of the reference and statement under subsection (2), (3) or (5) and who wishes to oppose the making of the order or the granting of the relief sought ("the opponent") shall, within 3 months from the date on which the copies are sent to him, file a counter-statement which shall be in the specified form, shall set out fully the grounds of opposition and shall be accompanied by the prescribed fee.
- (8)
- The opponent shall, at the same time as he files the counter-statement, send a copy of it to each of the following persons (not being a party to the counter-statement)—
- (a)
- the person making the reference;
- (b)
- each person whose name and address has been notified to him under subsection (4); and
- (c)
- each person whose name and address has been notified to him under subsection (6).
- (9)
- The person making the reference and any other person to whom a copy of the counter-statement is sent under subsection (8) may, within 3 months from the date on which it is sent to him, file evidence in support of his case and, if he files such evidence, he shall send a copy of it—
- (a)
- to the opponent; and
- (b)
- where the evidence is filed by such other person, to the person making the reference.
- (10)
- Within 3 months from the date on which a copy of evidence is sent to the opponent under subsection (9) or, if no such evidence is filed under that subsection, within 3 months from the expiry of the time within which evidence might have been filed, the opponent may file evidence in support of his case and, if he files such evidence, he shall send a copy of it to—
- (a)
- the person making the reference; and
- (b)
- any other person who has filed the evidence under subsection (9).
- (11)
- The person making the reference and any other person to whom a copy of the opponent's evidence is sent under subsection (10) may, within 3 months from the date on which the copy is sent to him, file further evidence confined to matters strictly in reply to the opponent's evidence and, if he files such further evidence, he shall send a copy of it—
- (a)
- to the opponent; and
- (b)
- where the further evidence is filed by such other person, to the person making the reference.
- (12)
- No further evidence shall be filed except by leave or direction of the Registrar.
- (13)
- The Registrar may give such directions as he may think fit with regard to the subsequent procedure.
(L.N. 37 of 2004)
(1) Where an order is made as is mentioned in section 14(2) of the Ordinance, the Registrar shall notify all
original applicants and their licensees of whom he is aware of the making of the order.
(2) A request under section 14(3) of the Ordinance shall be made - (a)
- in the case of a request by the original applicant or any of the original applicants, within 2 months from the date on which a notification is sent to him under subsection (1); or
- (b)
- in the case of a request by a licensee, within 4 months from the date on which a notification is sent to him under subsection (1).
Section: | 6 | Authorization under section 13(5) of the Ordinance | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
- (1)
- An application under subsection (5) of section 13 of the Ordinance for authority to do anything on behalf of a person to whom directions have been given under subsection (3)(c) or (4) of that section shall-
- (a)
- be in the specified form;
- (b)
- be accompanied by a statement setting out fully the facts upon which the applicant relies and the nature of the authorization sought; and
- (c)
- be accompanied by the prescribed fee.
- (2)
- The applicant shall, at the same time as he files the application, send a copy of the application and statement to the person alleged to have failed to comply with the directions.
(3) The Registrar may give such directions as he may think fit with regard to the subsequent procedure. (L.N. 37 of 2004)
- (1)
- Where, following the making of an order as is mentioned in subsection (2) of section 14 of the Ordinance, a question is referred to the Registrar under subsection (5) of that section as to whether any person is entitled to be granted a licence or whether the period or terms of a licence are reasonable, the reference shall-
- (a)
- be in the specified form;
- (b)
- be accompanied by a statement setting out fully the facts upon which the person making the reference relies and the period and terms of the licence which he is prepared to accept or grant; and
- (c)
- be accompanied by the prescribed fee.
- (2)
- The person making the reference shall, at the same time as he files the reference, send a copy of the reference and statement to every person in whose name the application is to proceed or, as the case may be, every person claiming to be entitled to be granted a licence, in either case not being a person who makes the reference.
- (3)
- If any recipient of the reference and statement does not agree to grant or accept the licence for such period and upon such terms as are set out in the statement, he shall, within 3 months from the date on which the copies are sent to him, file a counter-statement setting out fully the grounds of his objection.
- (4)
- (a) The counter-statement shall be in the specified form and shall be accompanied by the prescribed fee.
(b) The recipient shall, at the same time as he files the counter-statement, send a copy of it to the person making the reference.
- (5)
- The Registrar may give such directions as he may think fit with regard to the subsequent procedure.
Section: | 7 | Reference to the Registrar under section 14(5) of the Ordinance | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
(L.N. 37 of 2004) Section: | 8 | Request to record a designated patent application under section 15 of the Ordinance | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
Request to record a designated patent application
(1) A request to record a designated patent application under section 15 of the Ordinance (or, in the case of a designated patent application that is the national phase of an international application under the Patent Cooperation Treaty, under that section as applied by section 16 of the Ordinance) shall be in the specified form.
(2) Further to section 15(2) of the Ordinance (including that section as applied by section 16 of the Ordinance)-
(a) the documents required under paragraph (a) of that subsection- - (i)
- shall be filed in accordance with section 12 of these Rules; (L.N. 37 of 2004)
- (ii)
- shall be exempted from any requirement under section 104(1) of the Ordinance to be filed in one
of the official languages; - (b) the documents prescribed for the purposes of paragraph (d) of that subsection are those mentioned in section 9 of these Rules;
- (c) the following particulars shall be set out in the request-
- (i) the date of filing of the designated patent application;
- (ii) the title of the invention;
(iii) the application number of the designated patent application; (iv) the publication number (if any) assigned to the designated patent application by the designated patent office, and the date (if any) of its publication by the designated patent office; (L.N. 48 of 2002)
- (d) if the designated patent application is the national phase of an international application, the following particulars shall be set out on the request-
- (i) the application number of the international application;
- (ii) the filing date of the international application;
(iii) the date of publication of the international application by the International Bureau and its publication number; - (iv) the date of publication of the international application in the designated patent office indicating that the application has validly entered its national phase;
- (v) in the case of an international application designating the State Intellectual Property Office as published by the International Bureau in the Chinese language, the date of the issuance (發文日) of the National Application Notification (國家申請號通知書) by the State Intellectual Property Office; (2 of 2001 s. 18)
- (e) in the case of a request to record a divisional designated patent application as provided for in section 22 of the Ordinance or a request to record in a new application made pursuant to an order under section 55(4) of the Ordinance, the following particulars in relation to the earlier application for a standard patent shall be set out in the request to record-
- (i) the application number of the earlier application;
- (ii) the filing date of the earlier application;
(iii) the date of publication of the request to record of the earlier application;
- (f) the request shall contain such translations of documents and transliteration of names as may be required under section 56 of these Rules;
- (g) the request shall contain a list of the documents comprising the request to record and an indication of the number of sheets of each such document.
For the purposes of section 15(2)(d) of the Ordinance, the following documents are prescribed in relation to an applicant's statement explaining his entitlement to apply for the grant of a patent - (a) where the statement under that section indicates that the applicant for a standard patent is the successor in title to the person named in the designated patent application as applicant-
- (i) copies of such documents as establish the transfer, assignment or mortgage of the rights under the designated patent application in Hong Kong from that person to the applicant for a standard patent; or (L.N. 37 of 2004)
- (ii) in the absence of any such document in relation to a particular transfer, assignment or mortgage, a statement signed by the transferor, assignor or mortgagor confirming the fact of the transfer or assignment or mortgage;
- (b) where the statement indicates that the applicant for a standard patent, not being a person specified in paragraph (a), is the inventor of the invention who is entitled to the property in the invention in Hong Kong, such documents as establish that entitlement;
- (c) where the statement indicates that the applicant for a standard patent is the successor in title to the person specified in paragraph (b), the documents specified in that paragraph and, in addition
- (i) such documents as evidence the transfer or assignment or mortgage (whether by a single such transaction or by a number of such transactions) of the property in the invention in Hong Kong
from the inventor of the invention to the applicant;
- (ii)
- in the absence of any such document in relation to a particular transfer, assignment or mortgage, a statement signed by the transferor, assignor or mortgagor confirming the fact of the transfer, assignment or mortgage.
Section: | 10 | Details relating to the previous disclosure of the invention | | 30/06/1997 |
For the purposes of the statement required under section 15(2)(f) of the Ordinance, the following details relating to the previous disclosure of the invention are prescribed- - (a)
- the name and place of the exhibition or meeting referred to in section 55 of these Rules at which the invention was first disclosed;
- (b)
- the opening date of such exhibition or meeting;
- (c)
- if the first disclosure of the invention did not take place on the opening date of such exhibition or meeting, the date of such first disclosure.
Section: | 11 | Period of grace | | 30/06/1997 |
If the filing fee or advertisement fee payable under section 15(4) of the Ordinance has not been paid within the time provided for in that subsection, it may still be validly paid within a period of grace of 1 month after the sending by the Registrar to the applicant of a communication pointing out the failure to observe the time limit if, and only if, within this period an additional prescribed fee is paid. Section: | 12 | Size and presentation of documents | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
(1) All documents making up a request to record shall be so presented as to permit of- - (a)
- reproduction by photography, photocopying, photo offset and micro-filming, in an unlimited number of copies; and (L.N. 37 of 2004)
- (b)
- the scanning of the document by a device capable of capturing an image of the document and converting that image into a form suitable for storing on and retrieval by a computer.
- (2)
- All sheets of the documents making up a request to record shall be free from cracks, creases and folds; and only one side of the sheet shall be used.
- (3)
- All documents shall be on A4 paper (29.7 cm x 21 cm) which shall be pliable, strong, white, smooth, matt and durable.
(4) Each of the documents shall commence on a new sheet; and the sheets shall be connected in such a way that
they can easily be turned over, separated and joined together again. (5)-(6) (Repealed L.N. 37 of 2004) - (7)
- All the sheets contained in the documents shall be numbered in consecutive Arabic numerals. (L.N. 37 of 2004)
(8) (Repealed L.N. 37 of 2004)
- (9)
- All documents shall be reasonably free from deletions and other alterations, overwritings and interlineations and shall, in any event, be legible.
- (10)
- The Registrar may exempt any document from compliance with any of the provisions of this section, if the authenticity of the content is not in question and the requirements for good reproduction are not in jeopardy or in such other circumstances as he may think fit.
Section: | 13 | Form of statements, counter-statements and evidence | | 30/06/1997 |
Any statement, counter-statement or evidence filed shall, unless the Registrar otherwise directs, comply with the requirements of section 12(1) and (3), except that both sides of the sheet may be used in the case of statutory declarations and evidence.
Cap 514C - PATENTS (GENERAL) RULES Section: | 14 | Issue of receipt by Registrar | | 30/06/1997 |
On first receipt of any of the documents comprising a request to record the Registrar shall - (a) mark the documents with the date of their receipt by him and assign a number to the proceedings; and
- (b) issue to the applicant a receipt which shows the number so assigned, the nature and number of the documents received and the date of their receipt.
Section: | 15 | Date of publication of the designated patent application based on an international application under section 16 of the Ordinance | L.N. 47 of 2002 | 01/06/2002 |
(1) For the purposes of section 15(1) of the Ordinance, and despite section 5(2)(d)(ii) of the Ordinance, the date of publication of the designated patent application based on an international application under section 16 of the Ordinance shall be- - (a) in the case of an international application designating the European Patent Office, the date of publication by the European Patent Office in its Bulletin of the relevant bibliographical data showing that the international application has entered the national phase in the European Patent Office;
- (b) in the case of an international application designating the United Kingdom Patent Office, the date of publication by the United Kingdom Patent Office in its Official Journal (Patents) of the relevant bibliographical data showing that the international application has entered the national phase in the United Kingdom Patent Office;
- (c) in the case of an international application designating the State Intellectual Property Office as published by the International Bureau other than in the Chinese language, the date of publication by the State Intellectual Property Office in its Patent Gazette of the relevant bibliographical data showing that the international application has entered the national phase in the State Intellectual Property Office.
(2) (a) For the purposes of section 15(1) of the Ordinance, and despite section 5(2)(d)(ii) of the Ordinance, the other date as referred to in section 16(a)(ii) of the Ordinance which is applicable to the case of an international application designating the State Intellectual Property Office as published by the International Bureau in the Chinese language is any date within 6 months after the date of the issuance (發文日) of the National Application Notification (國家申請號通知書) by the State Intellectual
Property Office.
(b) An application made within the date as set out in paragraph (a) shall be accompanied by a copy of the
National Application Notification (國家申請號通知書). (2 of 2001 s. 18) Section: | 16 | Communication following examination on filing under section 17 of the Ordinance | | 30/06/1997 |
- (1) If a request to record fails to meet any of the requirements laid down in section 17 of the Ordinance, the Registrar shall communicate the disclosed deficiencies to the applicant and inform him that the request to record will not be dealt with as an application for a standard patent unless he remedies the disclosed deficiencies within 1 month of the date of the communication.
- (2) If the applicant remedies the disclosed deficiencies within that period he shall be informed of the date of filing accorded to the request to record.
- (1) If on examination of a request to record under section 19(1) of the Ordinance he notes that there are deficiencies in the request which may be corrected, the Registrar shall inform the applicant by notice accordingly and shall invite him to remedy the deficiencies within a period of 2 months from the date of such notice.
- (2) The Registrar may, upon request by the applicant presented before the expiry of such period and payment of the prescribed fee, grant an extension of that period for a further 2 months.
Section: | 17 | Rectification of deficiencies in request documents | | 30/06/1997 |
(3) If in any particular case the Registrar is satisfied that the applicant's failure to remedy the deficiencies
Cap 514C - PATENTS (GENERAL) RULES
within the period allowed under subsection (1) or (2) was wholly or mainly attributable to - (a)
- a failure or undue delay in the postal services in Hong Kong or in the country, territory or area of the designated patent office; or
- (b)
- any natural disaster or strike in Hong Kong or in the country, territory or area of the designated patent
office, the Registrar may grant such further extension of that period, not exceeding 2 months, as he considers reasonable. - (4)
- If the only deficiency in the request to record after the expiry of the periods specified in subsections (1), (2) and (3) (as may be applicable) is the failure to file a translation of the title of invention or abstract as referred to in section 56(2)(a) and (b) or a transliteration of the names of the applicant or inventor as referred to in section 56(2)(c), the Registrar may, on the request of the applicant, allow for a specified period within which the applicant may make good that deficiency on the payment of a penalty fee.
- (1)
- A request to record a divisional designated patent application ("new request to record") under section 22(1) of the Ordinance shall, except as mentioned below, be filed in accordance with section 15(2) of the Ordinance.
- (2)
- The relevant provisions of the Ordinance or these Rules concerning the filing date and compliance with the formalities shall be considered on the basis of the actual date of filing of the new request to record and not on the basis of the date of filing of the earlier request to record.
- (3)
- The provisions of sections 8 to 17 shall apply as if references in those sections to a designated patent application are references to a divisional designated patent application.
- (4)
- Where possible, the description and drawings of the earlier request to record and the new request to record shall respectively relate only to the matter for which protection is sought by that request to record; however where it is necessary for a request to record to describe the matter for which protection is sought by reference to another request to record, such reference shall include the application number assigned to that other request to record and shall indicate the matter for which protection is claimed in the other request to record.
Request for registration and grant
- (1)
- A request to register a designated patent and grant a patent for the invention shown in the specification of the designated patent under section 23(1) of the Ordinance shall be in the specified form and be signed by the applicant.
(2) Further to section 23(3) of the Ordinance- - (a)
- a copy of the document required under section 23(3)(a) of the Ordinance shall be filed in accordance with section 12 of these Rules; (L.N. 37 of 2004)
- (b)
- the documents prescribed for the purposes of paragraph (b) of that subsection are those mentioned in section 20 of these Rules;
- (c)
- the request shall also state
- (i)
- the publication number, application number and date of publication of the request to record;
- (ii)
- the title of the invention;
(iii) the date of grant and publication number of the designated patent;
- (d)
- the request shall contain such translation of documents and transliteration of names as may be required under section 56 of these Rules;
- (e)
- the request shall contain a list of the documents comprising the request to register and an indication of the number of sheets of each such document.
- (3)
- The provisions of section 12 apply in relation to a request to register a designated patent and the grant of a patent under this section as they apply in relation to a request to record a designated patent application.
Section: | 20 | Documents supporting statement of derivation of entitlement to apply | | 30/06/1997 |
For the purposes of section 23(3)(b) of the Ordinance, the documents to be filed in support of an applicant's statement explaining his entitlement to apply for the grant of a patent are such documents as suffice to establish that entitlement as set out in the statement. Section: | 21 | Period of grace | | 30/06/1997 |
If the filing fee or advertisement fee payable under section 23(5) of the Ordinance has not been paid within the time provided for in that subsection, it may still be validly paid within a period of grace of 1 month after the sending by the Registrar to the applicant of a communication pointing out the failure to observe the time limit if, and only if, within this period an additional prescribed fee is paid. Section: | 22 | Issue of receipt by Registrar | | 30/06/1997 |
On first receipt of any of the documents comprising a request for registration and grant, the Registrar shall- - (a)
- mark the documents with the date of their receipt by him; and
- (b)
- issue to the applicant a receipt which shows the application number assigned to the matter under section 14(b), the nature and number of the documents received and the date of receipt.
Section: | 23 | Communication following examination on filing under section 25(1) of the Ordinance | | 30/06/1997 |
- (1)
- If a request for registration and grant fails to meet any of the requirements laid down in section 24(1) of the Ordinance, the Registrar shall communicate the disclosed deficiencies to the applicant and inform him of the consequences provided under section 25(3)(b) of the Ordinance in the event of a failure to remedy those deficiencies within 1 month of the date of the communication.
- (2)
- If the applicant remedies the disclosed deficiencies within that period, he shall be informed of the date of filing accorded to the request for registration and grant.
- (1)
- If on examination of a request for registration and grant under section 26(1) of the Ordinance he notes that there are deficiencies in the request which may be corrected, the Registrar shall inform the applicant by notice accordingly and shall invite him to remedy the deficiencies within a period of 2 months from the date of such notice.
- (2)
- The Registrar may, upon request by the applicant presented before the expiry of such period and payment of the prescribed fee, grant an extension of that period for a further 2 months.
- (3)
- If in any particular case the Registrar is satisfied that the applicant's failure to remedy the deficiencies within the period allowed under subsection (1) or (2) was wholly or mainly attributable to
- (a)
- a failure or undue delay in the postal services in Hong Kong or in the country, territory or area of the designated patent office; or
- (b)
- any natural disaster or strike in Hong Kong or in the country, territory or area of the designated patent
Section: | 24 | Rectification of deficiencies in request documents | | 30/06/1997 |
office, the Registrar may grant such further extension of that period, not exceeding 2 months, as he considers reasonable.
(4) If the only deficiency in the request for registration and grant after the expiry of the periods specified in subsections (1), (2) and (3) (as may be applicable) is the failure to file a translation of the title of invention as referred to in section 56(2)(a) and (b) or a transliteration of the names of the applicant or inventor as referred to in section 56(2)(c), the Registrar may, on the request of the applicant, allow for a specified period within which the applicant may make good that deficiency on the payment of a penalty fee. Section: | 25 | Notice requesting reinstatement of an application under section 28 of the Ordinance | | 30/06/1997 |
A notice under section 28 of the Ordinance requesting reinstatement of an application for a standard patent shall be in the specified form and shall be accompanied by the additional prescribed fee. Section: | 26 | Application for restoration of rights under section 29 of the Ordinance | | 30/06/1997 |
An application under section 29 of the Ordinance for restoration of rights lost in relation to an application for a standard patent shall be in the specified form and shall be accompanied by the additional prescribed fee. Section: | 27 | Amendment of application for standard patent under section 31 of the Ordinance | | 30/06/1997 |
PART III
PROVISIONS AS TO APPLICATIONS FOR STANDARD PATENTS
BEFORE GRANT
- (1)
- Any amendment under section 31 of the Ordinance to an application for a standard patent shall be made by way of application to the Registrar in the specified form.
(2) An application for amendment - (a)
- shall clearly identify the proposed amendment and state the reasons for it; or
- (b)
- in the case of amendment to which section 31(2) of the Ordinance applies, shall be accompanied by a verified copy of the amendment made to the corresponding designated patent application and, where appropriate, a prescribed translation of that amendment.
- (1)
- An application to maintain an application for a standard patent under section 33 of the Ordinance shall be in the specified form. (L.N. 37 of 2004)
- (2)
- Where the period specified in section 33(2) of the Ordinance for the making of a maintenance application in respect of a patent application has expired, the Registrar shall, not later than 6 weeks after the last date for making the maintenance application under that subsection and if the maintenance fee specified in that subsection remains unpaid, send to the applicant of the patent application a notice informing him that the period for making a maintenance application has expired and of the consequences of not making such an application and paying the fees specified in section 33(4) of the Ordinance.
Section: | 28 | Maintenance of application for standard patent under section 33 of the Ordinance | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
(3) Notice under subsection (2) shall be directed to- - (a)
- the address specified by the applicant of the maintenance application on payment of the last maintenance fee; or
- (b)
- where another address has been notified to him for that purpose by the applicant of the maintenance
application since the last maintenance, that address, or, in any other case, the address for service entered in the register. Section: | 29 | Rectification of deficiencies and removal of doubts in maintenance documents | | 30/06/1997 |
(1) If the Registrar-
(a) notes deficiencies in a maintenance application under section 33(2) of the Ordinance; or
(b) has reason to doubt the veracity of any statement in the maintenance application, he shall communicate those deficiencies or doubts to the applicant and inform him that the maintenance application shall be refused unless the applicant remedies the deficiencies or removes the doubts within a period of 2 months from
Cap 514C - PATENTS (GENERAL) RULES
the date of such communication. - (2)
- The Registrar may, upon request by the applicant presented before the expiry of such period and payment of the prescribed fee, grant an extension of that period for a further 2 months.
- (3)
- If in any particular case the Registrar is satisfied that the applicant's failure to remedy the deficiencies or remove the doubts within the period allowed under subsection (1) or (2) was wholly or mainly attributable to-
- (a)
- a failure or undue delay in the postal services in Hong Kong or in the country, territory or area of the designated patent office; or
- (b)
- any natural disaster or strike in Hong Kong or in the country, territory or area of the designated patent
office, the Registrar may grant such further extension of that period, not exceeding 2 months, as he considers reasonable. - (4)
- If, upon consideration of the statements contained in a maintenance application, the Registrar is not satisfied that a case for maintenance under section 33 of the Ordinance has been made out, he shall notify the applicant accordingly and, unless within 1 month the applicant requests to be heard in the matter, the Registrar shall refuse the application.
- (5)
- If the applicant requests a hearing within the time allowed, the Registrar shall, after giving the applicant an opportunity of being heard, determine whether the maintenance application shall be allowed or refused.
Where - (a)
- an application for a standard patent has been deemed to be withdrawn and abandoned because a maintenance fee has not been paid within the period specified in section 33(2) and (3) of the Ordinance; and
- (b)
- the extended period specified in section 33(4) of the Ordinance has expired without the maintenance
fee and prescribed additional fee having been paid, the Registrar shall, within 6 weeks after the expiration of the extended period, notify the applicant of the standard patent of the fact and draw his attention to the provisions of section 34 of the Ordinance. - (1)
- An application to restore an application for a standard patent under section 34 of the Ordinance shall be in the specified form and be signed by the applicant.
- (2)
- The restoration application shall contain statements by the applicant in relation to matters relevant to the restoration of the application for a standard patent including, but without limiting those matters, statements indicating whether at the date of the restoration application-
- (a)
- the designated patent application is still valid or has been withdrawn; and
- (b)
- a patent has been granted in pursuance of that designated patent application and, if granted, the time for filing a request to register the designated patent and grant a patent under section 23 of the Ordinance has expired.
- (3)
- If, upon consideration of the statements, the Registrar is not satisfied that a case for an order under section 34 of the Ordinance has been made out, he shall notify the applicant accordingly and, unless within 1 month the applicant requests to be heard in the matter, the Registrar shall refuse the application.
- (4)
- If the applicant requests a hearing within the time allowed, the Registrar shall, after giving the applicant an opportunity of being heard, determine whether the application shall be allowed or refused.
- (5)
- If the Registrar decides to allow the application, he shall notify the applicant accordingly and require him, within 2 months after the date on which the notification is sent to him, to file an application in the form specified for the purposes of section 33(2) of the Ordinance, duly completed, accompanied by any unpaid maintenance fee and any additional fee prescribed for the purposes of section 33(4) of the Ordinance, upon receipt of which the Registrar shall order the restoration of the application for standard patent and shall advertise the fact of such order in the official journal. (2 of 2001 s. 19)
Section: | 32 | Renewal of standard patents | | 30/06/1997 |
PART IV
PROVISIONS AS TO PATENTS AFTER GRANT
Standard patents - (1)
- Payment of the renewal fee prescribed for the purposes of section 39(2) of the Ordinance shall be made by filing a request for renewal in the specified form accompanied by the renewal fee.
- (2)
- On receipt of the request for renewal duly completed and renewal fee, the Registrar shall issue a confirmation of payment.
- (3)
- Where the period for payment of a renewal fee pursuant to section 39(2) and (3) of the Ordinance has expired, the Registrar shall, not later than 6 weeks after the last date for payment under that section and if the fee still remains unpaid, send to the proprietor of the standard patent a notice reminding him that payment is overdue and of the consequences of non-payment.
(4) Notice to a proprietor under subsection (3) shall be sent to - (a)
- the address in Hong Kong specified by the proprietor on payment of the last renewal fee;
- (b)
- where another address in Hong Kong has been notified to the Registrar for that purpose by the proprietor since the last renewal, that address; or
- (c)
- in any other case, the address for service entered in the register.
- (5)
- The late payment of a renewal fee in the manner provided for in section 39(4) of the Ordinance shall be made by filing a request for renewal in the specified form accompanied by the renewal fee and any additional fee prescribed for the purposes of that section.
Section: | 33 | Notification of lapsed standard patent | | 30/06/1997 |
Where - (a)
- a standard patent has ceased to have effect because a renewal fee has not been paid within the period specified in section 39(2) and (3) of the Ordinance; and
- (b)
- the extended period specified in section 39(4) of the Ordinance has expired without the renewal and
prescribed additional fee having been paid, the Registrar shall, within 6 weeks after the expiration of the extended period, notify the proprietor of the patent of the fact and draw his attention to the provisions of section 40 of the Ordinance. Section: | 34 | Restoration of lapsed standard patents under section 40 of the Ordinance | L.N. 40 of 2004 | 07/05/2004 |
- (1)
- An application under section 40 of the Ordinance for the restoration of a standard patent which has ceased to have effect by reason of a failure to pay any renewal fee-
- (a)
- shall be in the specified form;
- (b)
- shall be signed by the applicant;
- (c)
- shall be supported by evidence of the statements made in it; and
- (d)
- shall be accompanied by the fee prescribed for the purposes of that section.
- (2)
- If, upon consideration of the evidence provided in support of an application, the Registrar is not satisfied that a case for an order under section 40 of the Ordinance has been made out, he shall notify the applicant accordingly and, unless within 1 month the applicant requests to be heard in the matter, the Registrar shall refuse the application.
- (3)
- If the applicant requests a hearing within the time allowed, the Registrar shall, after giving the applicant an opportunity of being heard, determine whether the application shall be allowed or refused.
- (4)
- If the Registrar decides to allow the application, he shall notify the applicant accordingly and require him, within 2 months from the date on which the notification is sent to him, to file a request for renewal in the specified form, duly completed, accompanied by any unpaid renewal fee and any additional fee prescribed for the purposes of section 40(4) of the Ordinance, upon receipt of which the Registrar shall order the restoration of the standard patent and shall advertise the fact of such order in the official journal. (2 of 2001 s. 19)
- (1)
- The period prescribed for the purposes of section 43(1) of the Ordinance is the period of 6 months beginning from— (L.N. 37 of 2004)
(a) the date of the amendment in the designated patent office; or
- (b)
- the date of grant of the standard patent, whichever is the later.
- (2)
- A filing of documents with the Registrar for the purposes of section 43(1) of the Ordinance shall be made by filing—
- (a)
- a verified copy of—
- (i)
- the amended specification; or
- (ii)
- the amending order;
- (b)
- a notice of the amendment in the specified form; and
- (c)
- such translations of the documents filed under paragraph (a) as may be required under section 56 of these Rules. (L.N. 37 of 2004)
Section: | 35 | Amendment of standard patent under section 43 of the Ordinance | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
(3) The Registrar may, if he thinks fit, require— - (a)
- the amendment be shown on a copy of the specification of which amendment has been made in the designated patent office; or
- (b)
- the filing, within the time specified by the Registrar, of a new specification as amended, which shall be prepared in accordance with section 12.
Section: | 36 | Opposition or revocation proceedings in the designated patent office for the purposes of sections 43 and 44 of the Ordinance | L.N. 47 of 2002 | 01/06/2002 |
The following opposition or revocation proceedings are prescribed for the purposes of sections 43 and 44 of the Ordinance- - (a)
- in the State Intellectual Property Office, any post-grant revocation proceedings under or in accordance with Articles 41 to 44 of the Patent Law of the People's Republic of China and Rules 55 to 63 of the Implementing Regulations of the Patent Law of the People's Republic of China; (2 of 2001 s. 18)
- (b)
- in European Patent Office, any post-grant opposition proceedings under or in accordance with Part V of the European Patent Convention.
Section: | 37 | Revocation of standard patent under section 44 of the Ordinance | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
- (1)
- A filing of documents with the Registrar for the purposes of section 44(2) of the Ordinance shall be made by filing those documents together with a notice, which shall be in the specified form, and such translations of the documents as may be required under section 56.
(2) An application under section 44(4) of the Ordinance for revocation of a patent shall- - (a)
- be in the specified form; (L.N. 37 of 2004)
- (b)
- be supported by evidence of the statements made in the application and, where appropriate, shall be accompanied by a prescribed translation of such evidence in accordance with section 56; and (L.N. 402 of 1997)
- (c)
- be accompanied by the prescribed fee.
- (3)
- The documentation prescribed for the purposes of section 44(2) of the Ordinance is a verified copy of an entry in the patent register of the designated patent office showing the revocation of the designated patent.
- (4)
- A person who files an application under section 44(4) of the Ordinance shall, at the same time, send a copy of the application and any evidence and translation accompanying the application to every person registered as proprietor of the patent and to every other person who is shown in the register as having a right in or under the patent.
(L.N. 37 of 2004)
(5) Any recipient of such a copy of an application under subsection (4) who wishes to oppose the application shall, within 3 months from the date of its issue, file a counter-statement which shall be in the specified form, shall set out fully the grounds of objection to the application being opposed and shall be accompanied by the prescribed fee.
(L.N. 37 of 2004)
(6) The recipient shall, at the same time as he files the counter-statement, send a copy of it to each of the persons described in subsection (4) other than any person who is party to the counter-statement. (L.N. 37 of 2004)
(7) The Registrar may give such directions as he may think fit with regard to the subsequent procedure. Section: | 38 | Mention of inventor under section 45 of the Ordinance | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
Patents generally - (1)
- A person claiming to be the inventor or a joint inventor of an invention for which a patent has been granted may apply to the Registrar for a finding that he is entitled to be mentioned in the patent as the inventor or joint inventor of the invention in pursuance of section 45(1) of the Ordinance.
- (2)
- Application for a finding under subsection (1), or a request under section 45(2) of the Ordinance for a finding that a person ought not to have been mentioned in a patent as sole or joint inventor in pursuance of such a finding, shall—
- (a)
- be in the specified form;
- (b)
- be accompanied by a copy of the application or request and a statement setting out fully the facts relied upon; and (L.N. 402 of 1997; L.N. 37 of 2004)
- (c)
- be accompanied by the prescribed fee.
- (3)
- A person who files an application under subsection (1) or a request under section 45(2) of the Ordinance shall, at the same time, send a copy of the application or request and any statement accompanying it to—
- (a)
- every person registered as proprietor of the patent other than the applicant or person making the request;
- (b)
- every person who has been identified in the patent as the inventor or a joint inventor of the invention;
- (c)
- every person who has been identified in the statement referred to in subsection (2)(b) as the inventor or a joint inventor of the invention; and
- (d)
- every other person who is shown in the register as having a right in or under the patent. (L.N. 37 of 2004)
- (4)
- Any recipient of such a copy of an application or request and statement who wishes to oppose the application or request shall, within 3 months from the date on which it is sent to him, file a counter-statement.
- (5)
- (a) The counter-statement shall be in the specified form, shall set out fully the grounds of objection to the application or the request being opposed and shall be accompanied by the prescribed fee.
(b) A person who files a counter-statement shall, at the same time, send a copy of it to each of the persons described in this section other than any person who is party to the counter-statement. (L.N. 37 of 2004)
- (6)
- The Registrar may give such directions as he may think fit with regard to the subsequent procedure.
- (1)
- A notice of an offer by a proprietor of a patent under section 48 of the Ordinance to surrender his patent shall be in the specified form and details of any such notice given to the Registrar shall be advertised by the Registrar in the official journal. (2 of 2001 s. 19)
- (2)
- Notice of opposition under section 48(2) of the Ordinance to the surrender of a patent may be given at any time within 2 months from the date of the advertisement.
(3) Such notice shall- - (a)
- be in the specified form;
- (b)
- be supported by a statement setting out fully the facts upon which the opponent relies and the relief which he seeks; and
- (c)
- be accompanied by the prescribed fee, and the opponent shall, at the same time as he files the notice, send a copy of the notice and of the statement to the proprietor of the patent. (L.N. 37 of 2004)
- (4)
- Within 3 months from the date on which the copies are sent to him, the proprietor of the patent shall, if he wishes to continue with the surrender, file a counter-statement which shall-
- (a)
- be in the specified form;
- (b)
- set out fully the grounds of objection to the surrender being opposed; and
- (c)
- be accompanied by the prescribed fee, and the proprietor shall send a copy of the counter-statement to the opponent. (L.N. 37 of 2004)
(5) The Registrar may give such directions as he may think fit with regard to the subsequent procedure.
- (1)
- A reference under section 49(1) of the Ordinance to the Registrar of the question as to whether an invention is a patentable invention having regard to any of the matters specified in section 93(5) of the Ordinance shall-
- (a)
- be in the specified form;
- (b)
- be accompanied by a statement setting out fully the reference sought and the facts upon which the person making the reference ("the applicant") relies; and
- (c)
- be accompanied by the prescribed fee. (L.N. 37 of 2004)
- (2)
- The applicant shall, at the same time as he files the reference, send a copy of the reference and statement to the proprietor of the patent. (L.N. 37 of 2004)
- (3)
- Within 3 months from the date of the sending of the copy of the reference and statement, the proprietor of the patent shall, if he wishes to contest the reference, file a counter-statement which shall-
- (a)
- be in the specified form;
- (b)
- set out fully the grounds of objection to the reference being opposed; and
- (c)
- be accompanied by the prescribed fee, and the proprietor shall send a copy of the counter-statement to the applicant. (L.N. 37 of 2004)
- (4)
- The applicant may, within 3 months from the date on which the copy of the counter-statement is sent to him, file evidence in support of his case and shall send a copy of the evidence to the proprietor.
- (5)
- Within 3 months from the date of the sending of the copy of the applicant's evidence, or, if the applicant does not file any evidence, within 3 months of the expiration of the time within which such evidence might have been filed, the proprietor of the patent may file evidence in support of his case and shall send a copy of that evidence to the applicant; and, within 3 months from the date of the sending of the copy of the proprietor's evidence, the applicant may file further evidence confined to matters strictly in reply and shall send a copy of it to the proprietor.
- (6)
- No further evidence shall be filed except by leave or direction of the Registrar.
- (7)
- The Registrar may give such directions as he may think fit with regard to the subsequent procedure.
Section: | 39 | (Repealed L.N. 37 of 2004) | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
Section: | 40 | Surrender of patents | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
PART V
PROPERTY IN PATENTS AND APPLICATIONS; REGISTRATION - (1)
- Every person concerned in any proceedings before the Registrar shall file an address for service.
- (2)
- The address for service must be a residential or business address in Hong Kong.
- (3)
- A person may file an address for service—
- (a)
- where the person files any specified form that requires the person who completes it to provide an address for service, by filing the specified form with the address for service stated on it; or
- (b)
- in any other case, by notifying the Registrar in writing.
- (4)
- Where a specified form referred to in subsection (3)(a) is filed in the name of 2 or more persons, the address for service stated on that form shall be treated as the address for service of each of those persons.
- (5)
- An applicant for a patent or the proprietor of a patent may use only one address for service for the purposes of all proceedings before the Registrar concerning that application or patent.
- (6)
- Subject to any filing to the contrary under this section, on the grant of an application for a patent, the address for service of the applicant shall be treated as the address for service of the proprietor of the patent for the purposes of all proceedings before the Registrar concerning that patent.
- (7)
- Where a person files an address for service for the purposes of any proceedings before the Registrar, that address shall be treated as being in substitution for any address for service previously filed by that person for the purposes of those proceedings.
- (8)
- Where, after a person has become a party to proceedings before the Registrar, the person appoints an agent for the first time or appoints one agent in substitution for another, the newly appointed agent shall file an address for service.
- (9)
- No act required or authorized by the Ordinance or these Rules to be done by or to a person referred to in subsection (8) in connection with the proceedings in question may be done by or to the newly appointed agent before the date on which he files an address for service.
(10) Any person may withdraw his address for service by notifying the Registrar in writing. (L.N. 37 of 2004)
- (1)
- Where an address for service is not filed as required by section 42, or where the Registrar is satisfied that the address for service of the proprietor of a patent or a party to any proceedings before the Registrar is no longer valid, the Registrar may send to the person concerned, at any of the addresses referred to in subsection (2), a notice to file an address for service.
(2) For the purposes of subsection (1), the addresses are— - (a)
- any previously filed address for service of the person;
- (b)
- any address of the person in Hong Kong that is shown in the register;
- (c)
- any residential or business address of the person in Hong Kong; and
- (d)
- any other address of the person that is known to the Registrar.
- (3)
- If any person to whom a notice is sent under subsection (1) fails to file an address for service within 2 months after the date of the notice—
- (a)
- any application (other than an application for a patent), notice or request filed by that person shall be treated as abandoned or withdrawn; and
- (b)
- the person shall be deemed to have withdrawn from any proceedings before the Registrar of which he is a party (other than as an applicant for a patent).
(4) This section is without prejudice to the operation of sections 17 and 68. (L.N. 37 of 2004) (1) No entry shall be made in the register - (a)
- in respect of any application for a standard patent before the request to record has been published in accordance with section 20 of the Ordinance; or
- (b)
- in respect of any application for a short-term patent before the short-term patent has been granted.
- (2)
- Upon publication of the application for the standard patent or upon grant of the short-term patent, the Registrar shall cause to be entered in the register
- (a)
- the name and address of the applicant or proprietor (as the case may be);
- (b)
- the name of the person stated by the applicant or proprietor believed to be the inventor or inventors;
- (c)
- the title of the invention;
- (d)
- the date of filing of the application for the patent and the application number;
- (e)
- the date of filing and the application number of any application declared for the purposes of section 98 or 111 of the Ordinance and the country, territory or area in or for which the application was made;
- (f)
- in the case of an application for a standard patent, the date of filing and the publication number of the corresponding designated patent application;
- (g)
- the date of publication of the application for the standard patent or grant of the short-term patent (as the case may be); and
- (h)
- the address for service of the applicant or proprietor (as the case may be).
- (3)
- The Registrar shall also cause to be entered in the register-
- (a)
- in relation to any patent or published application for a standard patent-
- (i)
- the address for service, if different to the entry made in accordance with subsection (2)(h);
- (ii)
- notice of any transaction, instrument or event referred to in section 52(3) of the Ordinance; and
- (b)
- in relation to any standard patent or standard patent application, in addition to the matters specified in paragraph (a)-
- (i)
- the date on which the published application is withdrawn, deemed to be withdrawn or refused;
- (ii)
- the date of grant of the corresponding designated patent;
(iii) the date on which the standard patent is granted; (iv) the name and address of the person or persons to whom the standard patent is granted, if different to the entry made in accordance with subsection (2)(a).
- (4)
- The Registrar may at any time enter in the register such other particulars as he may think fit.
Section: | 44 | Entries relating to section 13(1) of the Ordinance | | 30/06/1997 |
On the reference to the Registrar of a question under section 13(1) of the Ordinance he shall, subject to section 43(1), cause an entry to be made in the register of the fact and of such other information relating to the reference as he may think fit. Section: | 45 | Alteration of name or address | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
- (1)
- A request by any person, upon the alteration of his name, for that alteration to be entered in the register or on any application or other document filed at the registry shall be in the specified form.
- (2)
- Before acting on a request to alter a name, the Registrar may require such proof of the alteration as he thinks fit.
- (3)
- A request by any person for the alteration or correction of his address or address for service entered in the register or on any application or other document filed with the Registrar shall be made in the specified form or by notice in writing and shall identify any relevant application or patent to which the request relates. (L.N. 37 of 2004)
- (4)
- If the Registrar is satisfied that a request to alter a name or to alter or correct an address or address for service may be allowed, he shall cause the register, application or other document to be altered accordingly.
- (1)
- An application to register, or a notice to the Registrar of, any transaction, instrument or event to which section 52 of the Ordinance applies shall be in the specified form and shall be accompanied by the prescribed fee.
Section: | 46 | Registration of transactions, etc., in relation to patents and patent applications | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
(2) An application or a notice under subsection (1) shall - (a)
- where it relates to an assignment referred to in section 52(3)(a) or (c) of the Ordinance, be signed by or on behalf of the assignor; (L.N. 37 of 2004)
- (b)
- where it relates to a mortgage or the granting of a licence or sub-licence or security referred to in section 52(3)(b) or (c) of the Ordinance, be signed by or on behalf of the mortgagor or the grantor of the licence or security, as the case may be,
or, if not so signed, shall be accompanied by such documentary evidence as suffices to establish the transaction, instrument or event. - (3)
- The Registrar may direct that such evidence as he may require in connection with the application or notice shall be sent to him within such period as he may specify.
- (4)
- An application or a notice under subsection (1) may be rejected only in the event of failure to comply with the conditions laid down in subsection (2) or (3) or, where appropriate, in section 50(6) of the Ordinance and, if so rejected, the application will not be considered as an application or a notice for the purposes of section 52(1) of the Ordinance.
- (1)
- Except as provided in section 45(3), a request for the correction of an error in the register or in any document filed with the Registrar in connection with registration shall-
- (a)
- be made in the specified form and the correction shall be clearly identified on a document annexed to the request or, if not, on the request itself;
- (b)
- be accompanied by the prescribed fee.
- (2)
- The Registrar may call for such written explanation of the reasons for the request or evidence in support of it as he may require in order to satisfy himself that there is an error and, upon being so satisfied, shall make such correction as may be agreed between the proprietor of the patent or applicant and the Registrar.
- (1)
- Except where section 45(3) has effect, a request for the correction of an error of translation or transcription or of a clerical error or mistake in any specification of a patent, in an application for a patent or in any document filed in connection with a patent or such an application shall—
- (a)
- be in the specified form;
- (b)
- clearly identify the proposed correction; and
- (c)
- be accompanied by the prescribed fee, and the Registrar may, if he thinks fit, require that the correction be shown on a copy of the document of which correction is sought.
- (2)
- Where such a request relates to a specification, no correction shall be made in the specification unless the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.
- (3)
- Where the Registrar requires notice of the proposed correction to be advertised, he shall advertise the request and the nature of the proposed correction in the official journal. (2 of 2001 s. 19)
- (4)
- At any time within 2 months after the date of the advertisement, any person may give notice to the Registrar of opposition to the request.
- (5)
- Such notice shall be in the specified form, shall be supported by a statement setting out fully the facts on which the opponent relies and the relief which he seeks and shall be accompanied by the prescribed fee. (L.N. 37 of 2004)
- (6)
- The opponent shall, at the same time as he files the notice, send a copy of the notice and the statement to the person making the request. (L.N. 37 of 2004)
Section: | 47 | Request for correction of error in the register or in any document filed in connection with registration | | 30/06/1997 |
Section: | 48 | Correction of errors in patents and applications under section 146 of the Ordinance | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
(6A) If the person making the request desires to proceed with the request, he shall, within 3 months from the date of the sending of the copies to him— - (a)
- file a counter-statement in the specified form setting out fully the grounds on which he contests the opposition;
- (b)
- pay the prescribed fee; and
- (c)
- send a copy of the counter-statement to the opponent. (L.N. 37 of 2004)
(7) The Registrar may give such directions as he may think fit with regard to the subsequent procedure. Section: | 49 | (Repealed L.N. 37 of 2004) | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
Section: | 50 | Inspection of register | | 30/06/1997 |
- (1)
- The register, or entries or reproductions of entries in it, shall be made available for inspection by the public during the hours of business of the registry as published in accordance with section 148 of the Ordinance.
- (2)
- A request to be allowed to inspect the register shall be accompanied by the prescribed fee, if any, but a copy of an entry in or extract from the register shall be requested only in accordance with section 51.
- (1)
- Upon written request made in the specified form and payment of the prescribed fee, but subject to subsection (3), the Registrar shall supply
- (a)
- a certified copy or certified extract falling within section 51(11) of the Ordinance;
- (b)
- a certificate for the purposes of section 51(10) of the Ordinance.
- (2)
- Upon written request and payment of the prescribed fee, if any, but subject to subsection (3), the Registrar shall supply an uncertified copy of an entry in or an uncertified extract from the register or an uncertified copy of or an uncertified extract from anything referred to in section 51(11)(b) of the Ordinance.
- (3)
- The restrictions on making documents available for inspection contained in section 89(1) shall apply equally to the supply by the Registrar under this section of copies of or extracts from such documents or requests as are referred to in section 89(1), and nothing in this section shall be construed as imposing upon the Registrar the duty of supplying copies of or extracts from any document or file of a description referred to in section 89(2). (L.N. 37 of 2004)
- (1)
- Where the court makes any order or gives any direction under any provision of the Ordinance except section 46 or 102 of the Ordinance, the person in whose favour the order or direction is made or given shall file a sealed copy of the order or direction with the Registrar.
- (2)
- Where the court makes any order under section 46 or 102 of the Ordinance, the person in whose favour the order is made shall file with the Registrar a copy of any documents referred to in the order that show the amendments to be made, together with such translations of those documents as may be required under section 56 of these Rules.
- (3)
- The documents and translations referred to in subsection (2) shall be filed at such time as a copy of the order is filed with the Registrar in accordance with the order or direction made by the court or rules of court.
Section: | 51 | Certificates and copies supplied by Registrar | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
Section: | 52 | Order or direction by court | L.N. 37 of 2004; L.N. 40 of 2004 | 07/05/2004 |
(L.N. 37 of 2004) Section: | 53 | Time limit for application under section 58 of the Ordinance | | 30/06/1997 |
PART VI
EMPLOYEES' INVENTIONS