RE SUMITOMO ELECTRIC INDUSTRIES LTD.

HCMP 7642/1999

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 7642 OF 1999

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J U D G M E N T

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1. This is an application by way of Notice of Motion for an order that the Applicant be permitted to amend the specification and claims in a patent registered in Hong Kong in order to correspond with the amendments made to a EP (UK) Patent which also belongs to the Applicant.

2. The affidavit of the Applicant's solicitor shows that the Applicant is the proprietor of a EP (UK) Patent for an invention entitled "a production method of superconductive thin film and the device thereof" which had been registered with the UK Patent Office in 1991.

3. Pursuant to the laws then in force in Hong Kong, in particular the Registration of Patents Ordinance, Cap. 42, the EP (UK) Patent was registered in Hong Kong with the Patent Registry in 1993.

4. However, opposition proceedings had been filed against the EP (UK) Patent in May 1992 and as a result of those opposition proceedings, the specification and claims of the EP Patent were amended in 1999.

5. Following the amendments made to the EP (UK) Patent, the Applicant is asking that the patent registered in Hong Kong be amended to follow the amendments to the EP (UK) Patent. The Applicant has, pursuant to the directions first given in the case of Low Ban Chai, HCMP 5413 of 1998, caused the relevant advertisements to have been placed. The evidence also shows that up to today, there has been no notice from any party desiring to oppose the proposed amendments to the specification and claims.

6. Accordingly, I would order that the specification and claims in Hong Kong Patent Registration No. 1204 of 1993 be amended to correspond with the amendments made to EP (UK) Patent No. EPO285999 upon which the said Hong Kong Patent Registration No. 1204 of 1993 was founded and I would further order that the Hong Kong Registrar of Patents do record the aforesaid amendments to the specification and claims in the Patents Registry.