RE GENENTECH, INC

HCIP 57/2020

[2021] HKCFI 2178

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO. 57 OF 2020

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R E A S O N S  F O R  D E C I S I O N

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1.  This is an application for amendments of the description and the claims of a patent. I allowed the application in the hearing on 9 April 2021. I now give my reasons.

2.  The Applicant seeks to amend the specification of its Hong Kong Patent No. HK1185106 (the “HK Patent”) under s. 46(1) of the Patents Ordinance (Cap. 514) (the “PO”).

3.  The court’s power to amend the specification of a patent is contained in s. 46 of the PO which states:

“(1) Subject to section 103(3), the proprietor of a patent may apply to amend the specification of the patent.

(2) An application under subsection (1) must be made—

(a) for a standard patent (R), to the court;

(b) for a standard patent (O), to the Registrar or the court;

(c) for a short-term patent in respect of which a certificate of substantive examination has been issued, to the Registrar or the court.

(3) The Registrar or the court (as the case requires) must, in accordance with the rules made by the Registrar or the court—

(a) publish an application to amend the specification of a patent;

(b) advertise the fact of the publication by notice in the official journal; and

(c) consider any opposition to the application filed within the prescribed time.

(4) Despite subsection (3), the Registrar may decide not to publish the application or a part of the application if, in the Registrar’s opinion, the amendment proposed in the application or the part—

(a) would cause the specification of the patent to contravene section 77 or 78;

(b) contains any matter that disparages any person in a way likely to damage the person;

(c) contains any matter the publication or working of which would—

(i) be contrary to public order (“ordre public”) or morality; or

(ii) be likely to encourage offensive, immoral or anti-social behaviour; or

(d) is invalid under section 103(3).

(5) The Registrar or the court may by order—

(a) allow an amendment to the specification of a patent; and

(b) attach conditions to the amendment that the Registrar or the court thinks fit.

(6) No amendment may be allowed under subsection (5) if there are pending before the court proceedings in which the validity of the patent may be put in issue.

(7) If an amendment to the specification of a patent is allowed by the Registrar or the court under subsection (5), the Registrar must, in accordance with the rules—

(a) record and publish the amendment; and

(b) advertise the fact of the publication by notice in the official journal.

(8) The Registrar may, on the Registrar’s initiative, amend the specification of a patent so as to acknowledge a registered trade mark.

(9) An amendment to the specification of a patent under this section has effect as from the grant of the patent.

(10) The rules of court may provide for—

(a) the manner in which an application under this section is to be made to the court;

(b) the notification of the application to the Registrar and the Registrar’s appearance in proceedings;

(c) the filing of opposition to the application; and

(d) the procedures for determining the application.

(11) This section, as in force immediately before the commencement date of the Patents (Amendment) Ordinance 2016 (17 of 2016), continues to apply to an application that is filed with the court before that date to amend the specification of a patent.”

4.  For the present application, the Applicant placed advertisement to give notice of its application to amend the description and the claims of the HK Patent pursuant to the court’s order dated 9 November 2020.  The Applicant has confirmed that no notice of opposition has been received.

5.  Amendments to the specification of a patent under s. 46(1) of the PO are subject to s. 103(3) of the PO.

6.  Under s. 103(3) of the PO, any amendment of the specification of a patent is invalid to the extent that it:

(a)  extends the subject-matter disclosed in the application as filed; or

(b)  extends the protection conferred by the patent.

7.  The Applicant has confirmed by affirmation[1] that the amendments sought do not result in any extension of the subject-matter disclosed in the application as filed for the HK Patent nor any extension of the protection conferred by the HK Patent.

8.  S. 46(6) provides that no amendment shall be allowed if there are pending court proceedings in which the validity of the patent may be put in issue.

9.  The Applicant has confirmed by affirmation[2] that there are no proceedings pending before the court in which the validity of the patent is put in issue.

10.  Delay may be a relevant consideration as to whether the court should allow the amendments.  In Re Merck Sharp & Dohme Ltd.[3], Rogers VP (as he then was) said in paragraph 8:

“One of the important factors which is taken into account in considering whether amendments should be allowed in common law jurisdictions, particularly the United Kingdom, is the conduct of the patentee: see, for example, para. 7-26 Terrell on the Law of Patents (14th ed.). Delay by a patentee in seeking an amendment is often an important factor in the exercise of the discretion. Over and above that, one factor which must obviously be taken into account in Hong Kong is the failure of the patentee to seek a corresponding amendment promptly when an amendment has been made to the specification of the designated patent as part of the process of the grant of that patent.”

11.  The HK Patent was obtained based on the corresponding European Patent No. EP2592155 (the “European Patent”).  The European Patent was allowed to be maintained in the amended form by the European Patent Office on 16 August 2019 and the amended specification of the European Patent was published on 11 September 2019[4]. The Notice of Originating Motion to commence the subject proceedings (be treated as if begun by originating summons by the court’s order dated 9 November 2020) was first taken out on 5 October 2020, and so there was a time lapse of about 1 year.

12.  The Applicant has provided explanation concerning the timing of the application in paragraph 15 of the 1^st Affidavit of Leung Wai Lim.  The delay was due to an oversight by the European Patent attorney in charge of the European Patent.  In any event, the delay was not intentional nor was it a long one.  Apparently, no one is prejudiced by the delay.  In my judgment, this factor alone should not deter the court from allowing the amendments sought by the Applicant.

COSTS

13.  The Applicant agrees to pay for the costs of the Registrar of Patents (the “Register”) in respect of the present application.  According to Re Merck Sharp & Dohme Ltd.[5], the Registrar should exercise the right of audience to bring matters of importance to the court’s attention.  The Registrar is therefore obliged to attend the hearing to provide assistance and to answer any queries raised by the court.  Hence, the Registrar’s costs should be treated as part and parcel of the costs of the amendments which are to be borne by the Applicant.