Read the full judgment text of CACV 000186/2002 on BabelCite. This Court of Appeal judgment was delivered on 7 May 2002 before Rogers VP, Le Pichon JA, Cheung JA.
Civil procedure – patents – amendment of patent specification – time for filing court order – Patents (General) Rules – section 39(1) – whether extendable – Registrar's power under section 100 – Order 3 rule 5 of the Rules of the High Court – inherent jurisdiction – date of court order (pronouncement vs sealing) – conduct of patentee – Registrar's right of audience under section 131 of the Patents Ordinance – European patent opposition – substantial amendment of designated patent – delay in seeking corresponding Hong Kong amendment. Material facts: Merck Sharp & Dohme Limited obtained a European patent designated 0411668 (filed 3 August 1990, granted as UK patent 1 March 1995) and registered it in Hong Kong as HK0970081 on 16 January 1997. After an opposition by Rotta Research Laboratium S.p.A., the European patent was substantially amended, with publication and mention of the opposition decision on 11 November 1998. A P8 request under section 43 of the Patents Ordinance was rejected by the Registrar in March 1999, and a section 46 originating motion to amend the Hong Kong specification was not launched until 23 March 2001. The substantive amendment application was allowed by Yuen J on 10 October 2001. Whether the one-month period prescribed by section 39(1) of the Patents (General) Rules for filing a notice of the court-ordered amendment could be extended under Order 3 rule 5 or the inherent jurisdiction. Held (Rogers VP, Le Pichon and Cheung JJA agreeing): No. Section 39(1) of the Patents (General) Rules is not extendable; the deliberate omission of any extension mechanism reflects the importance of prompt attention to amendments of patent specifications, and section 100 of those Rules confers no power on the Registrar to extend this period. The patentee was two days late, and the various post-hearing delays (draft order not approved until 22 October 2001, sealed only on 29 October 2001, posted to Jersey and returned) were unexplained and did not assist. Whether the operative date of the order was the date of sealing (29 October 2001) rather than the date of pronouncement (10 October 2001). Held: No. The date of the order is the date upon which it was pronounced, namely 10 October 2001; the contrary submission was plainly wrong. The court further remarked (obiter) on the heavy onus on a patentee seeking amendment (citing Chevron Research Company's Patent [1970] RPC 480) and on the desirability of the Registrar exercising his right of audience under section 131 of the Patents Ordinance on amendment applications, particularly where substantial delay or points of principle arise. Outcome: appeal dismissed; the patentee will be unable to register the amendment permitted by the court. Leave to appeal to the Court of Final Appeal granted (FAMV 18/2002).
Legal issues: Whether time for filing a court order under section 39(1) of the Patents (General) Rules can be extended · Whether the relevant date of a court order is the date of pronouncement or sealing
Outcome: Appeal dismissed; the patentee is unable to register the amendment permitted by the court. Leave to appeal to the Court of Final Appeal was granted in FAMV 18/2002.
Cited by 1 case