LegCo Paper No. CB(1)631/96-97
Ref: CB1/BC/54
(These minutes have been
seen by the Administration)

Bills Committee on Patents Bill

Minutes of meeting held on Wednesday, 18 December 1996 at 8:30 a.m. in Conference Room B of the Legislative Council Building

Members present :

Members absent :

Public officers attending :

Mr Augustine L S CHENG: Deputy Secretary for Trade and Industry
Mr Stephen Selby: Director of Intellectual Property
Mr Patrick NIP: Principal Assistant Secretary for Trade and Industry
Mrs Flora CHENG: Assistant Director of Intellectual Property
Mr Ben LEUNG: Assistant Secretary for Trade and Industry
Mrs Dora LI: Chief Intellectual Property Examiner

Clerk in attendance :

Miss Odelia LEUNG

CAS(1)1

Staff in attendance :

Ms Kitty CHENG: ALA2
Ms Sarah YUEN: SAS(1)1

I. Election of chairman of the meeting

II. Confirmation of minutes of meeting and matters arising

III. Discussion on the Bill

IV. Date of next meeting

I. Election of chairman of the meeting

1. In the absence of the Chairman who had other commitments, members elected Miss Margaret NG to chair the meeting.

II. Confirmation of minutes of meeting and matters arising

(LegCo Paper Nos. CB(1) 504 and 539/96-97)

2. The minutes of the meeting held on 26 November 1996 were confirmed.

3. Miss Margaret NG drew members' attention to the following matters arising from the last meeting of the Bills Committee held on 26 November 1996 -

Miss Margaret
NG

She had consulted the Hong Kong Bar Association (the Bar) which indicated that it had no further comments to make other than its submission to the Administration in April 1996. She would send a copy of this submission to members for consideration.
The Secretariat had invited views on the Bill from the Hong Kong Institute of Trade Mark Practitioners (HKITMP). Its submission and the Administration's response to it were at LegCo Paper Nos. CB(1)504/96-97(01) and (02) respectively.

4. Representatives of the Administration supplemented the following developments -

The Administration had already provided the Hong Kong General Chamber of Commerce and the Chinese General Chamber of Commerce with a copy of the draft Bill for comments during the consultation exercise in February 1996. The Administration had inadvertently omitted them from the consultation list provided to members earlier and confirmed that it had not received any response from them.
As for the point raised by the Law Society of Hong Kong (the Law Society) regarding the meaning of "infringement" (clauses 73(1) and 74(2)), the Administration had referred the comments to the Law Draftsman who confirmed that the Irish Patents Act was adopted in drafting these clauses. The different wording was just a matter of terminology and no difference in meaning was intended. Subject to members' agreement, the Administration was prepared to incorporate the existing wording of the UK Patents Act 1977 (Patents Act) in the Committee stage amendments.

The Administration had made a comparison of the European and the Chinese patent systems as regards standard patents, setting out their similarities and differences (LegCo Paper No. CB(1)504/96-97(04)).

Clerk to
note

5. On point 3(b) above, members agreed to discuss HKITMP's submission when the Bills Committee examined the Bill clause-by-clause.

6. On a member's enquiry as to whether The Chinese Manufacturers' Association of Hong Kong had received a copy of the draft Bill (point 4(a) above), the Administration confirmed that it had consulted the Association and the Association's views were included in the paper entitled "A summary of responses" (paragraph 2 of LegCo Paper No. CB(1)364/96-97(02)).

7. Members went over the paper comparing the European and the Chinese patent systems (point 4(c) above). In elaborating their differences, representatives of the Administration made the following points -

The Administration was not entirely sure of the meaning of the phrase "substances obtained by means of nuclear transformation" (point (f) under the Chinese patent system). It might mean the transient elements discovered in the course of using a nuclear accelerator.
The scope of patentable inventions under the Hong Kong system was in line with international standards. If there were any conflicts, the parties concerned could apply to the court to test the validity of the patent under the local laws, not the laws of the designated patent offices. The differences between the European and the Chinese patent systems would not have any significant impact on the operation of the local system.
As was the case in most other places, rather than defining the meaning of "an invention", clause 93 of the Bill specified the excluded items. Although the wording of the clause was more in line with that of the European Patent Convention (Article 52) and of the Patents Act, the substance was similar to that under the European and the Chinese patent systems.
Under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of the World Trade Organisation (WTO), WTO members should protect computer programs as literary works under copyright laws, hence the exclusion of computer programs from the Bill. However, if some computer software should form an integral part of the working of an invention, it was possible for that computer program to be protected together with the invention under the local system.
Although it was possible that certain conflicts might arise when patent protection was granted on the basis of patents awarded outside a single territory and a single territory's law, there were a number of other territories that provided patent protection on the basis of patents awarded outside their territories. Moreover, the European and the Chinese patent systems were by and large very consistent with each other. There would therefore be little problem for Hong Kong to grant a patent on the basis of the registration of a patent granted by either a European patent office or the Chinese Patent Office.

III. Discussion on the Bill

Summary of responses to major comments

(LegCo Paper No. CB(1)364/96-97(02))

8. Responding to members' questions, representatives of the Administration supplemented the following details -

The Administration had considered with an open mind the comments received during the consultation exercise and, after balancing the various interests, incorporated as many suggestions as possible into the Bill. The gazetted Bill was in effect the Administration's response to various comments on the draft Bill.

The Administration had informed all parties that had commented on the draft Bill the gazettal of the Bill. Some parties then raised a number of issues. The Administration was happy to continue discussion with them. For example, the Administration had had some further discussion with the Law Society. Its understanding was that the Law Society's concern remained in just two areas, namely, the term of short-term patents and the requirement to file a designated search report with the application for a short-term patent. The Law Society was largely satisfied with other matters.

Clerk and
Chairman
Admin.

9. Members considered the summary too general and proposed that the Administration should prepare a checklist categorising the major issues raised by consultees on the Bill. The checklist should include names of consultees who had made comments, suggestions by the consultees and cross-reference to the particular clause(s) or sub-clause(s) of the Bill. It should also indicate the latest position of policy decisions regarding such issues which should be updated in the course of scrutiny of the Bill. Miss Margaret NG further proposed that the Administration might consider sending the checklist to consultees for comments so that the Bills Committee could deal with any additional comments in one go. The Administration agreed to compile the checklist. It also undertook to provide a sample checklist for members' perusal prior to filling in the details. Members agreed that the Clerk and the Chairman would follow up with the Administration on the format of the checklist.

Procedures

10. Mrs Selina CHOW stressed the need to consider both the policy on and the procedures for grant of patents under the Bill. She opined that the procedures should be simplified and streamlined to facilitate implementation. Given that the Bill was the principal legislation, the rules made under it must not include any new issues which had not been considered in the main legislation. In response, the Director of Intellectual Property (D of IP) explained that the reason for dealing with certain issues like the procedures through rules was that such issues were more likely to be susceptible to changes. Stating the procedures in the rules would therefore effect a more flexible and simpler way of introducing changes. The Administration would consult the relevant parties on the draft rules in January 1997. Miss Margaret NG stated that as the principal legislation would set the perimeter of the rules, it would suffice at this stage for members to examine the Bill to ensure that the procedures were fair and simple. The rules should only contain details of the procedures.

Costs

(LegCo Paper No. CB(1)364/96-97(03))

11. D of IP briefed members on the paper comparing the difference in the costs incurred for applying for a standard patent and a short-term patent under the current law and the Patents Bill. He stressed that the fees were only indicative figures derived on the basis of the procedures envisaged in the Bill. As some processes were still being designed, the fees were by no means final. He assured members that the fees would be set at levels sufficient to recover the costs incurred in providing the service without any profit or taxation elements.

12. Mrs Selina CHOW queried why the cost for applying for a standard patent should double under the new system. In response, representatives of the Administration provided the following explanations -

The Administration had to recover within a span of five years the costs for the computer system installed for the new patent system as well as the increased staff costs resulted from the expanded registry to operate the new system.
The new independent system based in Hong Kong was much more elaborate than the current patent system. As it was a system independent of the UK Patent Office and the Chinese Patent Office, it was necessary to have its own computer search facility.

There were stringent rules governing the recovery of costs. It was not within the discretion of individual departments to decide whether or not to charge for certain services. Indeed the government charges were only a small fraction of the total costs incurred for the grant of a patent. Other costs such as the legal fees and patent agency fees were beyond the control of the Hong Kong Government.

Admin.

13. Miss Margaret NG said that since the procedures would have bearing on the costs, she requested the Administration to alert members of any need for adjustment of the figures as a result of any changes in procedures. At members' request, the Administration agreed to provide a paper listing out all the items of costs, government or professional, to be incurred by an applicant in applying for a standard patent and a short-term patent. As far as possible the Administration would provide some indications on the professional costs. Members noted that the actual costs would depend on the complexity of an invention.

IV. Date of next meeting

14. Subject to the Chairman's availability, the next meeting was scheduled for 7 January 1997 at 4:30 p.m.. Members agreed to discuss the details of the short-term patent system including its merits, the search report requirement, the term, the application procedures, and the right of protection.

15. The meeting ended at 10:00 a.m.

Legislative Council Secretariat

6 January 1997

Last Updated on 16 December 1998