PLC Paper No. CB(1)211
(These minutes have been
Ref: CB1/BC/54 seen by the Administration
and cleared with the Chairman)

Bills Committee on Patents Bill

Minutes of meeting
held on Monday, 12 May 1997, at 12:30 pm
in Conference Room B of the Legislative Council Building

Members present :

    Hon Ambrose LAU Hon-chuen, JP (Chairman)
    Hon Mrs Selina CHOW, OBE, JP
    Hon CHAN Kam-lam
    Hon Margaret NG

Members absent :

    Hon NGAI Shiu-kit, OBE, JP
    Hon Ronald ARCULLI, OBE, JP
    Dr Hon HUANG Chen-ya, MBE
    Hon Paul CHENG Ming-fun
    Dr Hon LAW Cheung-kwok
    Hon SIN Chung-kai

Public officers attending :

Mr Augustine CHENG
Deputy Secretary for Trade and Industry
Mr Stephen SELBY
Director of Intellectual Property
Mr Peter CHEUNG
Deputy Director of Intellectual Property
Mr Jonathan ABBOTT
Senior Assistant Law Draftsman
Miss Elizabeth TSE
Principal Assistant Secretary for Trade and Industry
Mr Ray PERERA
Assistant Director of Intellectual Property
Mr M K CHU
Assistant Secretary for Trade and Industry
Miss Magdalene LING
Chief Intellectual Property Examiner

Clerk in attendance :

Miss Odelia LEUNG
Chief Assistant Secretary (1)1

Staff in attendance :

Ms Kitty CHENG
Assistant Legal Adviser 2
Ms Sarah YUEN
Senior Assistant Secretary(1)1



I Discussion on availability of interlocutory injunctions for short-term patents

(LegCo Paper No. CB(1)1557/96-97)

The Deputy Secretary for Trade and Industry (DS/T&I) referred members to the letter from the Chairman of the Committee on Intellectual Property of the Law Society of Hong Kong (the letter), which expressed support for retention of interlocutory injunctions for short-term patents. He reiterated the reasons for retaining this remedy.

Miss Margaret NG expressed regrets over the Law Society’s position. In her view, the Law Society had not taken into consideration the rights of all parties involved nor formulated balanced views on the issue. Nevertheless, she was relieved to note paragraph 5 of the letter that the Law Society recognised the possibility of abuse. To guard against possible abuse, she urged the Administration to take the following measures -

  1. to issue practice directions with regard to the grant of interlocutory injunctions for short-term patents;
  2. to give sufficient briefing to the Judiciary on vulnerability of interlocutory injunctions to abuse; and
  3. to strengthen the rules to the principal ordinance against possible abuse.
Admin

Reiterating her reservations regarding retention of interlocutory injunctions for short-term patents and introduction of short-term patents, Miss NG requested the Administration to review the short-term patent system after its operation for a certain period of time, in particular the successful rate of applications for interlocutory injunctions. DS/T&I noted Miss NG’s views. He agreed that the Secretary for Trade and Industry would address the member’s concern at the resumed debate. The Administration also undertook to report the results of the review to the Panel on Trade and Industry in due course.

Admin

In reply to a member’s question on the successful rate of applications for discharge of interlocutory injunctions, the Deputy Director of Intellectual Property said that there had been successful cases where the orders were challenged on the grounds of questionable patent ownership. Miss NG opined that such cases were rare. Instead of going to the court to apply for a discharge, which could be costly, the affected party would normally resort to settlement out of court.

After considering all the views expressed, the Bills Committee agreed that without interlocutory injunctive relief, short-term patents would be unenforceable; its retention was therefore necessary.

II Any other business

Miss Margaret NG queried the Law Society’s claim that the proposed removal of the court’s power to grant the equitable relief of interlocutory injunctions in respect of short-term patents might contravene the Basic Law. The Assistant Legal Advisor (ALA) was requested to advise on this point.

In response, ALA said that she also doubted the Law Society’s claim. Members agreed that the Secretariat should write a letter to the Law Society to clarify this point and circulate the reply to members.

Clerk

(Post-meeting note: The reply was circulated to members vide LegCo Paper No. CB(1)1628/96-97.)

Members agreed that ALA would scrutinize the Chinese version of the proposed Committee stage amendments (LegCo Paper No. CB(1)1531/96-97) and draw to their attention of any irregularity.

ALA

Members expressed appreciation of the Administration’s efforts in providing clear and detailed information to the Bills Committee in the course of deliberations.

The meeting ended at 1:00 pm.

Provisional Legislative Council Secretariat
1 September 1997

Last Updated on 16 December 1998