Re Wing Yick Bamboo Scaffolders Ltd.

HCMP6390/2001

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO.6390 OF 2001

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R U L I N G

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1. These proceedings were commenced by Wing Yick Bamboo Scaffolders Limited ("the applicant") to revoke a short-term patent No.1024379A ("the Patent") registered in the name of Wui Loong Scaffolding Works Company Limited ("the respondent") and to have the entry of the Patent in the Register of Patents be expunged.

2. At the hearing on 7 January 2002, a point was taken by the respondent as to the propriety of the originating process. Having heard submissions, I reserved my ruling on it and indicated that I would hand it down later, which I now do.

The issue

3. The point of contention is what is the proper originating process for an application to revoke the grant of a patent and to rectify the register of patents under the Patents Ordinance, Cap.514. The applicant had commenced these proceedings by originating motion. Mr Liao who appeared for the applicant informed me that initially the applicant had issued a Writ, but had discontinued that action upon further considerations on the matter. The respondent argued that the proceedings should not have been commenced by originating motion, and that originating summons is the proper mode for commencing these proceedings.

The patents legislation

4. It is helpful to approach the issue by looking at the development of the patents legislation in Hong Kong. The current Patents Ordinance, Cap.514 was introduced in 1997 to replace the Registration of Patents Ordinance, Cap.42 ("the repealed Ordinance"). Under the repealed Ordinance, patents granted by the UK Patent Office and by the European Patent Office and designated the UK were registrable in Hong Kong. It was a registration system which was dependent on the UK patent system. There was no power on the Hong Kong court to amend or revoke the patents since they were not granted in Hong Kong. Hong Kong court could only order that the register of patents be rectified.

5. Under the new Patents Ordinance, two categories of patents can be granted, namely, standard and short-term patents. The grant of a short-term patent does not depend on the grant of the same protection elsewhere. There are also provisions under the new legislation for the revocation of patents : sections 90 and 91.

Order 103 of the Rules of the High Court

6. Order 103 of the Rules of the High Court provides for High Court proceedings in relation to patents registered under the repealed Ordinance. Rule 29 provides that application for rectification of the register of patents must be made by originating motion. Despite the repeal of the old Ordinance and the enactment of the new Patents Ordinance, Order 103 has not been updated nor amended. The question is whether Order 103, rule 29 continues to govern or provide a useful guide to proceedings for revocation of patents and rectification of the patents register.

7. For the applicant, it is argued that Order 103, rule 29 provides a useful guide. In support of the argument, Mr Liao referred to Hong Kong Civil Procedure, Vol.1 para.103/0/2 which reads :

"This Order has yet to be substantially updated consequent upon the enactment of the new Patents Ordinance, but should meanwhile continue to guide the practice and procedure in High Court proceedings relating to patents insofar as it is applicable."

8. Reliance was also placed on the decision of Yuen J in Re Low Ban Chai (amendment of patent) [1999] HKLRD 416. In that case, Yuen J followed the procedure on the giving of notice of an application to amend the specification after grant, under Order 104, rule 3 of the English Rules of the Supreme Court, when there are no rules of court dealing with the matter. It is argued that adopting the approach in Re Low Ban Chai, where a point of practice and procedure is covered by Order 103, the relevant rules will serve as a useful guide notwithstanding that Order 103 sets out to govern applications under the repealed Ordinance.

9. The respondent on the other hand argued that Order 103, rule 29 cannot serve as a guide to application for revocation of short-term patents and rectification of the register of patents made under the new Patents Ordinance. It was pointed out that short-term patent is a new category introduced by the new Patents Ordinance. So is the remedy of revocation. It was further argued that proceedings cannot be commenced by originating motion unless authorized by law.

Reasons for the ruling

10. Order 5, rule 5 of the Rules of the High Court provided that :

" Proceedings may be begun by originating motion or petition if, but only if, by these rules or by or under any written law the proceedings in question are required or authorized to be so begun."

It is therefore plain that proceedings can only be begun by originating motion if it is a mode authorized by the written law.

11. Order 103 by its title and nature applies only to the repealed Ordinance. It has no direct application to the new Patents Ordinance. Likewise, Order 103, rule 29, in requiring or authorizing rectification application to be begun by originating motion, only concerns application to rectify the registration of patents registered under the repealed Ordinance. It cannot be taken to be authorizing the use of originating motion for application to rectify the register of patents under the Patents Ordinance. Short of such authorization by the rules or other written law, there is no basis for using the originating motion to commence revocation and rectification proceedings.

12. The next question that arises for consideration is whether the present application should have been begun by originating summons.

13. Order 5, rule 3 of the Rules of the High Court stated that :

" Proceedings by which an application is to be made to the Court of First Instance or a judge thereof under any written law must be begun by originating summons except where by these rules or by or under any written law the application in question is expressly required or authorized to be made by some other means.

This rule does not apply to an application made in pending proceedings."

14. It follows that an application for revocation and rectification made pursuant to sections 90 and 91 of the Patent Ordinance, being an application made to the Court of First Instance under a written law, is required by Order 5, rule 3 to be begun by originating summons in the absence of any rule requiring or authorizing it to be made by some other means. That, in my view, will be the position unless and until Order 103 has been updated to reflect and take care of the new Patents Ordinance.

15. In the present case, Mr Liao submitted that the use of the originating summons is inappropriate because there will be serious factual disputes. While I accept that the effect of Order 5, rule 4 is that contentious claim or application should normally be commenced by writ, the rule must be read subject to Order 5, rules 3 and 4. The opening part of Order 5, rule 4 makes this point clear beyond doubt.

16. In my view, the present application should have been made by originating summons. The use of originating motion is therefore incorrect, and I so rule.

17. Had these proceedings been begun by originating summons, then directions could be given for the proceedings to be continued as if begun by writ together with other directions on evidence : Order 28, rules 4 and 8 of the Rules of the High Court.

18. Although these proceedings were commenced by an erroneous mode, there is no dispute that the irregularity can be waived : Order 2, rule 1(1) and (3) of the Rules of the High Court. There will therefore be an order that notwithstanding the failure to comply with Order 5, rules 3 and 5 of the Rules of the High Court in the commencement of these proceedings, these proceedings shall not be nullified. I will also order that these proceedings be continued as if begun by writ with the further directions agreed between the parties.

Conclusion

19. Accordingly, the order and directions I make are as follows :

(1) Notwithstanding the failure to comply with Order 5, rules 3 and 5 in commencing these proceedings, these proceedings shall not be thereby nullified and be treated as if begun by originating summons.

(2) These proceedings shall continue as if begun by writ.

(3) The respondent do within 21 days of the handing down of this Ruling file and serve its Answer to Particulars of Objection filed herein.

(4) The Notice of Originating Motion, Particulars of Objection, the Further and Better Particulars of the Particulars of Objection to be filed and served by the applicant and the Answer to Particulars of Objection to stand as the pleadings herein.

(5) The applicant do within 21 days of the date of service of the Answer to the Particulars of Objection file and serve affidavit(s) in support of the application herein.

(6) The respondent do within 21 days of the service of the affidavit(s) in support of the application herein and the Further and Better Particulars of the Particulars of Objection, file and serve affidavit(s) in answer.

(7) The applicant do within 21 days thereafter file and serve affidavit(s) in reply.

(8) If either party desires to cross-examine any of the deponents of the affidavits filed, it must service notice to cross-examine within 14 days of the service of the applicant's affidavit(s) in reply or of the time limited for the filing and service of the affidavit(s) in reply as provided for under paragraph (7) above, whichever is earlier.

(9) The costs of the hearing on 7 January 2002 be costs in the cause.