|
HCMP 632/2011
IN THE HIGH COURT OF THE
HONG KONG SPECIAL ADMINISTRATIVE REGION
COURT OF FIRST INSTANCE
MISCELLANEOUS PROCEEDINGS NO. 632 OF 2011
-------------------
|
IN THE MATTER OF Section 46 of Patents Ordinance (Cap. 514) and the Inherent Jurisdiction of the High Court |
|
and |
|
IN THE MATTER OF Hong Kong Standard Patent No. 1001352 granted to Otter Controls Limited |
-------------------
BETWEEN
|
OTTER CONTROLS LIMITED |
Applicant
|
|
and |
|
|
REGISTRAR OF PATENTS |
Respondent
|
HCMP 633/2011
IN THE HIGH COURT OF THE
HONG KONG SPECIAL ADMINISTRATIVE REGION
COURT OF FIRST INSTANCE
MISCELLANEOUS PROCEEDINGS NO. 633 OF 2011
-------------------
|
IN THE MATTER OF Section 46 of Patents Ordinance (Cap. 514) and the Inherent Jurisdiction of the High Court |
|
and |
|
IN THE MATTER OF Hong Kong Standard Patent No. 1020850 granted to Otter Controls Limited |
-------------------
BETWEEN
|
OTTER CONTROLS LIMITED |
Applicant
|
|
and |
|
|
REGISTRAR OF PATENTS |
Respondent
|
-------------------
Before : Hon Sakhrani J in Court
Date of Hearing : 1 September 2011
Date of Judgment : 1 September 2011
_________________
J U D G M E N T
_________________
1. By the originating summons in HCMP 632 of 2011 the applicant asks for an order that the specification of Hong Kong Standard Patent No. 1001352 (“the 352 Patent”) be amended as indicated in red on the copy of the specifications annexed to the originating summons.
2. By the originating summons in HCMP 633 of 2011 the applicant asks for an order that the specifications of Hong Kong Standard Patent No. 1020850 (“the 850 Patent”) be amended as indicated in red on the copy of the specifications annexed to the originating summons.
3. By my order made in each of the proceedings on 12 May 2011 it was ordered that both applications be heard at the same time. I also gave directions for the applicant to advertise the proposed amendments to the patents in English in the Gazette as set out in the order.
4. The applicant has not received any notice of an intention by any third party to oppose the proposed amendments to either patent.
5. Mr Ng, for the Registrar of Patents, who has appeared today informs me that there is no objection to the applications. The applications are unopposed.
6. The application for the 352 Patent was granted by the Hong Kong Patents Registry on 12 June 1998.
7. The 352 Patent is based on the registration of the corresponding designated United Kingdom patent GB 2285716. The application for the United Kingdom patent was published by the United Kingdom Patent Office on 19 July 1995. It was granted on 20 August 1997.
8. The validity of the United Kingdom patent was challenged in a number of actions in the English High Court. Those actions were settled on the basis of the parties agreeing that the United Kingdom patent should be amended. Permission was given by the English High Court for the specifications of the patent to be amended and the specifications were amended on 23 November 1999.
9. The application for the 850 patent was granted by the Hong Kong Patents Registry on 26 November 2004.
10. The 850 patent is based on the registration of the corresponding designated European patent 0922426B. The application for the European patent was filed at the European Patent Office on 25 August 1993 and was published by the European Patent Office on 16 June 1999. The patent was granted by the European Patent Office on 17 December 2003.
11. The European patent was amended following opposition proceedings in the European Patent Office with the amendments being published on 12 April 2010.
12. The applications to amend the 352 patent and the 850 patent by the originating summonses were issued on 8 April 2011. There has obviously been some delay in the making of the application to amend the 352 patent and that is an important factor in the exercise of the Court’s discretion (Re Merck Sharp & Dohme Ltd [2002] 3 HKLRD 221).
13. It is in the public interest that amendments to patents be sought promptly. Where there is delay in applying for an amendment, the patentee should show reasonable grounds for his delay (paragraph 15-66 Terrell on the Law of Patents 17th Edn; Smith Kline & French Laboratories Limited v. Evans Medical Limited [1989] FSR 561).
14. The reason for the delay in taking out these applications has been explained in the evidence before me. It was due to inadvertence that it was not made earlier.
15. It is clear from the evidence that the amendments sought by both applications do not expand the scope of the patents. Rather, they seek to bring the Hong Kong patents in line with the amendments made to the United Kingdom patent and the European patent. In respect of the 352 patent there is also an amendment sought as to a typographical error which is obvious from the evidence before me.
16. The applicant has not asserted either patent in its un-amended form against any person. There are no pending proceedings in Hong Kong in which the validity of either of the patents is put in issue.
17. I am satisfied on the evidence before me that the discretion to grant the amendments sought should be exercised in the applicant’s favour.
18. I make an order in each set of proceedings that the applicant has leave to amend the specification of the patents in the terms of the originating summons.
19. I also direct that the applicant shall file a sealed copy of the order with the Registrar of Patents within 28 days from today and that upon receipt of the sealed copy of the order, the Registrar of Patents do record the amendments in the Patents Registry.
20. I also order that the applicant do pay the costs of these proceedings (including the costs of attending the hearings on 12 May 2011 and today) to the Registrar of Patents. The costs are summarily assessed at HK$3,500 in respect of each set of proceedings.
|
(Arjan H. Sakhrani)
Judge of the Court of First Instance,
High Court |
Mr Douglas Clark, instructed by Messrs Hogan Lovells, for the Applicant in HCMP 632/2011 and HCMP 633/2011
Mr Ryan Ng, Solicitor of Intellectual Property Department, for the Registrar of Patents
|