Re Almirall, S.A.

HCMP 2093/2016

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 2093 OF 2016

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J U D G M E N T

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Introduction

1.This is an application of the proprietor of a Hong Kong Standard Patent (“the Applicant”) under section 46(1) of the Patents Ordinance, Cap 514 for an order to amend the description and claims of the Hong Kong Standard Patent.  The purpose of the application is to bring the Hong Kong Standard Patent in line with the amendments which have already been made to the Applicant’s corresponding EP patent upon which the Hong Kong Standard Patent was found.

The proposed amendments

2.The proposed amendments to the Hong Kong Standard Patent are as follows:

(i) under “Description Section”, the words “The present invention also provides” under the original paragraph [0022] be deleted and replaced with the words “Also described are”; and

(ii) under “Claims”, Claims 24 to 30 be deleted and all references to Claims 31 to 34 be renumbered to Claims 24 to 27 accordingly.

Consideration

3.That the court has the power and discretion to allow the proposed amendments is not in doubt.  I note also that based on the affidavit evidence before me:

(a)  there are no pending court proceedings in which the validity of the Hong Kong Standard Patent may be put in issue: see section 46(2) of the Ordinance;

(b)  the proposed amendments were advertised in the 23 September 2016 issue of the Gazette[1] and no notice of opposition has been received: see section 46(4) of the Ordinance; and

(c)  the proposed amendments do not extend the subject‑matter disclosed in the application as filed or the protection conferred by the patent: see section 103(3) of the Ordinance.

4.The Registrar of Patents has taken a neutral stance in the present application but draws the court’s attention to the fact that there has been a nearly 14-month gap between the amendments of the EP Patent[2] and the taking out of the summons for the present application.[3] Reference was made to Re Merck Sharp & Dohme Ltd[4] where Roger VP, giving the judgment of the Court of Appeal, remarked that “Delay by a patentee in seeking an amendment is often an important factor in the exercise of the discretion”.[5]  I am alive to the fact that the decision of the Court of Appeal in Re Merck Sharp & Dohme Ltd was reversed on appeal by the Court of Final Appeal.  However, the validity of the aforesaid remarks of Roger VP has not been affected by the judgment of the Court of Final Appeal.  Moreover, the aforesaid remarks of Roger VP’s were cited with approval by Sakhrani J in the recent case of Otter Controls Ltd v Registrar of Patents.[6]

5.The Applicant’s solicitor has filed an affidavit explaining the delay.[7]  In short, it is said that the Hong Kong Standard Patent is part of a large patent family and that there are corresponding patents and patent applications in around 40 countries worldwide.  As such, the Applicant needed to seek local advice before deciding upon a worldwide post grant amendment strategy.  Besides, there was an additional legal complication as the patent family covers a medicinal product which has received marketing authorisation in many countries and those marketing authorisations would also need to be taken into account.  Finally, the Applicant has a licence agreement with a pharmaceutical company, both of them having local partners in many countries.  The Applicant needed to consider the interest of those various parties.

6.I am prepared to accept that the aforesaid legal complications are genuine concerns and that the Applicant would have taken time to consider and deal with them before deciding on its worldwide post grant amendment strategy.  However, the affidavit of the solicitor, with respect, is inadequate in that it has failed to address how the 14-month gap was in fact utilised to deal with the complications mentioned in the affidavit.  Moreover, little weight, if any, can be attached to the personal opinion stated in the affidavit that the delay was “entirely reasonable”.

7.Nevertheless, despite the time gap between the amendment of the EP Patent and the taking out of the summons for the present application, I am satisfied that this is a suitable for the court to exercise its discretion to allow the proposed amendments.  My reasons are as follows:

(a)  it is in the public interest that the specification of the Hong Kong Standard Patent should be amended to correspond with the amendments already made to the EP Patent so that the public is not misled as to the scope of the Hong Kong Standard Patent;

(b)  the proposed amendments merely involve deletion of claims;

(c)  the Applicant has not received any notice of opposition;

(d)  the time‑gap in the present application is substantially less than the ones in Re Merck Sharp & Dohme Ltd (28.5 months) and in Otter Controls Ltd (11 years).  In both cases, the amendments were eventually allowed; and

(e)  similar to the situation in Otter Controls Ltd, the Applicant did not assert the Hong Kong Standard Patent in its unamended form against any person between 24 June 2015 (the date of amendment of the EP Patent on publication) and 15 August 2016 (the date of the originating summons).

Costs

8.The Registrar seeks costs of this application and the Applicant agrees to it.  The sum is agreed by the parties at $5,170.

Order

9.Based on the above, I make the following orders:

(a)  the application to amend the description and the claims of the Hong Kong Patent Registration No HK1042487 in the manner as set out in the advertisement published in the 23 September 2016 issue of the Hong Kong Government Gazette be allowed;

(b)  the Applicant shall, within 28 days from the date hereof, serve on the Registrar of Patents a sealed copy of this Order;

(c)  there be liberty to apply for the purpose of implementation of this Order; and

(d)  the Applicant shall pay the Registrar’s costs in this application in the fixed sum of $5,170.

Mr Jonathan Tai instructed by Wilkinson & Grist, for the applicant

Mr Frederick Kwok for the Registrar of Patents