IN RE LOW BAN CHAI

1998, No. MP5413

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATION REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 5413 OF 1998

____________

____________

__________________________________

REASONS FOR JUDGMENT

__________________________________

1. This is an application by Notice of Motion for an amendment of the Applicant's Hong Kong Patent No. 352/95 so as to correspond with amendments made to UK Patent No. GB2256579.

2. The Applicant, Mr. Low had in November 1991 filed a patent application in the UK Patent Office in relation to his invention of a cutter of foodstuffs. The UK patent application claimed priority from an application filed in Malaysia in 1990.

3. The UK patent application was granted in 1994. At that time the Registration of Patents Ordinance, Cap. 42 of the Laws of Hong Kong was then in force. Mr. Low accordingly applied in Hong Kong to re-register his UK patent in Hong Kong under the terms of that Ordinance. That application was granted and Hong Kong Patent Registration No. 352/95 was accordingly granted to him.

4. However in 1997, the Registration of Patents Ordinance (Cap. 42) was repealed and the new Patents Ordinance was enacted. In accordance with the Patents (Transitional Arrangements) Rules which came into effect on the same day as the new Ordinance, the Hong Kong Patent Registration No. 352/95 of the Applicant being a patent registered in Hong Kong on the commencement date of the new Ordinance was deemed to be a standard patent granted in accordance with the terms of the new Ordinance.

5. Thereafter, the Applicant made application to the UK Patent Office to amend his UK patent. The amendments were duly advertised. No opposition to the amendments was filed and the UK Patent No. GB2256579 was amended. I would pause to add that apart from the amendments advertised, certain other amendments were required by the Patent Office.

6. The Applicant has now applied to amend his Hong Kong deemed standard patent to reflect the amendments made to the UK patent because relevant changes in the UK do not automatically apply to Hong Kong. Under the new Patent Ordinance, an application to the court under section 46 of the new Patent Ordinance is required.

7. The matter first came before me on 10th December 1998 when I gave directions as to advertisements to be made, as it seemed to me that under section 46(4) persons may wish to oppose an application under the section, even though there are no rules of court in Hong Kong which provide for the giving of notice to any persons who might wish to oppose an application.

8. The Applicant has, in accordance with my directions, advertised the amendments. However, it would appear that his solicitors have followed exactly the same advertisements as were made in the UK, although I would have thought that it would have been more appropriate for them to have also advertised the amendments required by the Patent Office.

9. Be that as it may, no one has opposed the application and I consider that the Applicant should be granted an order in terms of the Notice of Motion, that is:

1) the specification and claims in Hong Kong Patent 352/95 be amended in the records of the Hong Kong Patent Registry to correspond with the said amendments made to UK Patent No. GB2256579 as set out in exhibit "TJH-4" to the affidavit of Timothy John Hancock sworn on 15th October 1998;

2) that the Hong Kong Registrar of Patents do record the aforesaid amendments to the specification in the Patents Registry; and

3) that there be no order as to costs.