Re Hong Kong Short-term Patent No. Hk1120707

HCMP1195/2009

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 1195 OF 2009

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Before : Hon Bharwaney J in Chambers (Open to public)

Date of Hearing : 25 February 2010

Date of Handing Down of Judgment : 9^th March 2010

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JUDGMENT

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1.This is an application under Order 28, r. 4(1), RHC for summary judgment on the claim of the applicant for revocation of the respondent’s Hong Kong short-term patent HK1120707.

2.The applicant’s case is that the short-term patent should be revoked because of its prior publication in the People’s Republic of China (“PRC”). The PRC patent of identical specification was published by the PRC Patent Office on 11 June 2008. The application date of the PRC patent was 7 August 2007. The filing date of the respondent’s Hong Kong patent was 19 November 2008, after the one-year priority claim period. It can be seen that the Hong Kong patent specification is a direct photocopy of the PRC patent specification.

3.At the hearing of the Originating Summons on 21 October 2009, the respondent did not dispute that there was prior publication of the patent in the PRC but contended that he was authorised by the owner of the PRC patent to register the Hong Kong patent. The applicant submitted that this fact was irrelevant to the issue of prior publication by the PRC patent.

4.At that hearing, the respondent was granted leave to file evidence in opposition to the summary judgment application but he has not availed himself of that leave. Instead, he filed a Notice of Offer to Surrender a patent in Chinese on 16 December 2009 and, in order to comply with formal requirements, a further Notice in English on 11 January 2010. The Patents Registry published the Notice of Offer to Surrender Patent on 15 January 2010 and allowed 2 months for any person to file opposition.

5.The matter came before me on 25 February 2010 when Mr Lau Kwong Keung appeared on behalf of the applicant. The respondent was absent. It was not clear to me what the applicant’s interest was in this matter and I granted leave to the applicant to file a further affidavit showing his interest in the matter. This he has done. I am satisfied that the applicant has an interest in revoking the respondent’s Hong Kong patent as the applicant is in the business of selling fluorescent lamps and is one of the proprietors of another Hong Kong patent in respect of fluorescent lamps.

6.When a patent is surrendered, the patent ceases to have effect from the date notice of acceptance by the Patents Registry of the offer of surrender is advertised in the Official Journal (see section 48(3) of the Patents Ordinance, Cap. 514). As this has not yet occurred, the respondent’s Hong Kong patent is still in force today. Accordingly, it is open for me to grant summary judgment for revocation if I am satisfied that there are no triable issues in this case. Unlike the case of an acceptance of an offer to surrender, upon revocation, the patent is treated as never having had effect (see section 44(6) of the Patents Ordinance, Cap. 514).

7.I agree with the submissions of the applicant and I am satisfied that there are no triable issues in this case. I grant summary judgment for revocation of the Hong Kong patent on the ground that the alleged invention in the Hong Kong patent is not new and does not involve an inventive step over the disclosure of the PRC patent which was published before the filing date of the Hong Kong patent.

8.I award costs of these proceedings and of the application to the applicant to be taxed, if not agreed.

Mr Lau Kwok Keung, of Messrs ONC Lawyers, for the Applicant

The Respondent, Fong Chi Kit, in person, absent