Re Merck Sharp & Dohme Ltd.

FAMV No. 18 of 2002

IN THE COURT OF FINAL APPEAL OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

MISCELLANEOUS PROCEEDINGS NO. 18 OF 2002 (CIVIL)

(ON APPLICATION FOR LEAVE TO APPEAL FROM

CACV NO. 186 OF 2002)

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D E T E R M I N A T I O N

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Mr Justice Ribeiro PJ:

1. On 10 October 2001, on an application made by the present applicant, Yuen J made an order under s46 of the Patents Ordinance, requiring the Registrar of Patents to amend a Hong Kong patent of which the applicant is the proprietor.

2. However, the Registrar declined to enter that order on the register and so declined to effect any amendment. He did so on the ground that the order had been tendered out of time and that he lacked power to extend time. The applicant's challenge to the Registrar's position failed in the courts below for the reasons that are set out in the judgments of Kwan J and the Court of Appeal (both reported at [2002]2 HKC 475).

3. The applicant then sought leave to appeal to the Court of Final Appeal with a view to arguing that the Registrar was wrong to decline registration and that, contrary to his view, the Registrar has power to extend time for such registration by virtue of O3 r5 of the Rules of the High Court or the court's inherent jurisdiction.

4. After the papers applying for leave were lodged, the Registrar of Patents applied to a single judge of this Court for leave to intervene and, should leave be granted, to proceed as a party in the appeal. That application was referred to the Appeal Committee to be dealt with today.

5. Having considered the written submissions submitted, the Appeal Committee caused the Registrar of the Court to write to the parties prior to the hearing, informing them that the Appeal Committee wished to hear argument as to whether a point of great general or public importance arises in relation to the question whether s39(1) of the Patents (General) Rules and that part of s100(2) of those Rules as relates to s39(1) are ultra vires.

6. We are grateful to counsel for their submissions on this and the other issues. Mr Liao who appears for the Registrar has helpfully accepted that the question of vires is one of great general or public importance.

7. In the result, we grant the applicant leave to appeal subject to the usual conditions. We also grant leave to the Registrar of Patents to intervene and to participate in this appeal as a respondent.