IN RE LOW BAN CHAI

HCMP 5413/1998

HEADNOTE

Directions for advertisement of application to amend patent under s.46 Patent Ordinance cap.514.

HCMP 5413/1998

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 5413 OF 1998

___________________

D I R E C T I O N S

___________________

1. This is an application by Notice of Motion for orders that the specification and claims in a Hong Kong patent be amended in the records of the Hong Kong Patent Registry to correspond with amendments made to the corresponding UK Patent upon which UK Patent the said Hong Kong registration was founded.

2. Since this appears to be the first such application after the passing of the Patent Ordinance of 1997, it may be helpful for me to set out the requirement for advertisement which, in my view, should be complied with before the court would, in the exercise of its discretion under section 46 of the Patent Ordinance, exercise its power to amend the specification after grant.

3. Section 46(4) provides that

"any person wishing to oppose an application under the section may, in accordance with rules of court, give to the Court notice of opposition and the Court shall consider the opposition in deciding whether to grant the application."

4. However, it would appear that there are no rules of court which provide for the giving of notice to any parties who might wish to oppose an application.

5. Accordingly, before I can consider the application in this case, I think I would order the applicant to advertise in the Gazette (in English being the language of the original application), the advertisement to include the identification of the pending proceedings in which leave is proposed to be applied for, and setting out full particulars of the amendment sought, stating the applicant's address for service in Hong Kong and stating that any person intending to oppose the amendment must within 28 days after the appearance of the advertisement give written notice of his intention to the applicant. A person who gives notice in accordance with the advertisement shall be entitled to be heard on the application subject to any direction of the court as to costs.

6. These directions follow roughly Order 104 rule 3 of the English Rules of Court.

7. As far as the present application is concerned, I would adjourn the hearing of the Motion to not before 56 days from today to enable the applicant to place the advertisement in the Gazette and for suitable lead time before the matter comes back to court.