RE MERCK SHARP & DOHME LTD

CACV 186/2002

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF APPEAL

CIVIL APPEAL NO. 186 OF 2002

(ON APPEAL FROM HCMP NO. 1626 OF 2001)

________________________

________________________

________________________

REASONS FOR DECISION

________________________

Hon Rogers VP:

1. This was an appeal from a decision of Madam Justice Kwan handed down on 1 March 2002. The application before the judge was an application under Order 3 rule 5 of the Rules of the High Court, alternatively under the inherent jurisdiction, to extend time for filing an order at the Patents Registry. The order had been made by Madam Justice Yuen (as she then was), ordering the Registrar of Patents to amend a patent specification. At the hearing of this appeal, the appeal was dismissed and this court indicated that it would give its reasons in writing which we now do.

2. The appellant, Merck Sharp & Dohme Limited, originally applied for a European patent designated 0411668 on 3 August 1990. A designated UK patent was granted on 1 March 1995 and a Hong Kong registration HK0970081 was registered on 16 January 1997. The particulars which were available to this court showed that there was a filing date of the Hong Kong application of 17 December 1996.

3. An affidavit of Mark R Daniel, a United States patent counsel, who represents the appellant, indicated that an opposition to the European patent had been filed by Rotta Research Laboratium S.p.A.. The result of the opposition was that the European patent was amended by deleting all the existing claims and inserting a new claim 1. It is unnecessary to set out the new claim for the purposes of these proceedings. It is sufficient to say that the amendment appears substantial. Mr Daniel's affidavit does not specify the date of amendment but the date of 11 November 1998 is given as the date of "publication and mention of the opposition decision" in the copy of the patent specification which was exhibited to Mr Daniel's affidavit.

4. The rules relating to amendments are, in my view, important. Hong Kong does not have an examination office. In order to secure procedure in respect of patents which would be regarded as internationally acceptable in terms of examination and opposition, United Kingdom patents have for many years been registrable in Hong Kong. When the European Patent Office opened, European patents with United Kingdom designations became registrable in Hong Kong. The European system provides for early publication of patent applications. Opposition to patent applications can be made in circumstances where the final outcome may be delayed.

5. Under the patent regime as it existed in Hong Kong prior to July 1997, the registration of a patent in Hong Kong was dependant upon the patent in the United Kingdom because it was the rights and privileges granted in the United Kingdom which were extended to Hong Kong. Since June 1997, Hong Kong patents, once granted, have a life, independent of the designated United Kingdom patent. It can also be noted that once a European patent has been granted and opposition proceedings have been concluded, the United Kingdom patent itself is subject to United Kingdom patent law and any question of infringement, validity or amendment is decided in accordance with United Kingdom law. Likewise, once a patent has been granted in Hong Kong any question of infringement, validity or amendment is decided in accordance with Hong Kong patent law.

6. Since the hearing of this appeal, the appellant has submitted correspondence which would indicate that on 25 (or possibly 15) February 1999 a form P8, "Request to make an Amendment" was submitted. Apparently this was intended to be in reliance upon section 43 of the Patents Ordinance. The Registrar of Patents informed the appellant's agent by letter of 3 March 1999 that section 43 did not apply to the present patent and that application for amendment should be made to court. It could also be observed that the P8 form was apparently dated more than 3 months after the publication and mention of the opposition decision.

7. Despite that, the present application was not launched until 23 March 2001. It was then that an originating motion was issued seeking to amend the specification of the Hong Kong patent. That application was made under section 46 of the Patents Ordinance. Section 46(1) gives the court a discretionary power to amend a specification patent. It reads as follows:

"Subject to section 103, the proprietor of a patent granted under this Ordinance may apply to the court to amend the specification of the patent and the court may by order allow any such amendment subject to such conditions as it thinks fit."

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 Edition. 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.

9. Since the matter has not been argued on this appeal I do not propose to say more than that it would be surprising if, without considerable and detailed explanation, amendments were permitted by the court in circumstances where the designated patent had been amended a long time previously as part of the application process. This point is not without its significance, because the patentee has not sought to justify or explain the need for amendment, other than on the basis that there was an amendment to the designated patent. The court has not been shown the prior art and evidence has not been provided to support the application. In Chevron Research Company's Patent [1970] RPC 480, Graham J said at 586:

"It is essential that those seeking amendment should realise that they have a heavy onus to discharge and can only expect to do so if they have full evidence to prove their case and put the whole story before the court."

It would appear that no relevant facts other than the fact of the amendment were drawn to the attention of Yuen J, at any rate in the documents founding the application to amend, when the judge heard the matter on 10 October 2001.

10. In this respect I should draw attention to one further matter that, as also in this court, the Registrar of Patents did not appear and was not represented on that application. Under section 131 of the Patents Ordinance, the Registrar is given the right of audience in respect of any application which will affect the register. Applications to amend patent specifications are highly important. Often they involve technical matters. In the case of this application, there may have been an important point of principle, namely, whether the patentee should be permitted to amend in view of the very substantial delay before the application was made. These matters should have been brought to the court's attention and the right of audience by and on behalf of the Registrar could clearly have been exercised. It is clearly not always sufficient for the Registrar to take a neutral stand in relation to such matters as amendment.

11. The point of this appeal arises because under section 39 of the Patents (General) Rules:

" (1) The proprietor of a patent in respect of which the specification has been amended by court order under section 46 of the Ordinance shall, within 1 month of the making of such a court order, file with the Registrar notice of such amendment.

(2) A notice under subsection (1) shall be in the specified form and shall be accompanied by a verified copy of the court order together with any supporting documents."

12. The patentee was two days late in filing the order of the court. Although section 100 of the Patents (General) Rules permits the Registrar to extend time under the Rules, the time provided under section 39(1) of the Rules may not be extended. It is no accident that an extension of time is not permitted. Prompt attention to amendments of patent specifications has always been a feature of patent law. The history of the events following the hearing on 10 October was that, according to the note on the court record, the draft order was not approved until 22 October. That delay in itself is regrettable, but as explained during the course of the hearing, it frequently happens that when an order is required urgently, draft orders can be approved and the order sealed in a matter of hours if not minutes. For some unexplained reason, even when the draft order had been approved, the order was not sealed until 29 October. Thereafter, apparently, the order was sent by post to patent agents in Jersey whereupon it was returned with the documentation necessary for filing in the Patents Registry. It was said that there was a delay in the postal system. Even in respect of that, the position has not been fully or properly explained. Neither the date of posting from Hong Kong nor that from Jersey was set out in the evidence. Nor was it explained why a courier service was not used, nor why the appellants' solicitors could not themselves have been authorised to sign the form P8.

13. The short answer to this appeal is that time had expired and the High Court has no power to extend the time laid down in section 39(1) of the Patents (General) Rules. The judgment of Kwan J has dealt with the matter more than adequately and fully and I do not propose to repeat what is stated therein. In addition to the matters dealt with by Kwan J, it was said that the court should treat the order of Yuen J as having been made on 29 October, being the date of sealing. That is, quite simply, wrong. The date of the order is the date upon which it was pronounced, namely, 10 October 2001. In the circumstances, the patentee will be unable to register the amendment permitted by the court.

Hon Le Pichon JA:

14. I agree.

Hon Cheung JA:

15. I agree.