Hong Kong Regulations

THE RULES OF THE HIGH COURT - ORDER 103

THE REGISTRATION OF PATENTS ORDINANCE: THE PATENTS ACTS 1949 TO 1961 AND 1977

(Past version on 30/06/1997).

Adaptation amendments retroactively made - see 25 of 1998 s. 2 1. Definitions
(O. 103, r. 1)

In this Order-

"existing patent" (現存的專利) means a patent mentioned in
section 127(2)(a) or

   (c)  of the Act;

"the Act" (法令) means the Patents Act 1977; (1977 c. 37 U.K.);

"the Ordinance" (條例) means the Registration of Patents Ordinance (Cap 42).

19. Actions for infringement: particulars of pleading (O. 103, r. 19)

(1) The plaintiff in an action for infringement of a patent must serve with
his statement of claim particulars of the infringements relied on.

(2) If a defendant in such an action disputes the validity of the patent, he
must serve with his defence particulars of the objections to the validity of
the patent on which he relies in support of the allegation of invalidity.

(3) If a defendant in such an action alleges, as a defence to the  action,
that at the time of the infringement there was in force a contract or licence
relating to the patent made by or with the consent of the plaintiff and
containing a condition or term void by virtue of section 44 of the Act, he
must serve on the plaintiff particulars of the date of, and parties to, each
such contract or licence and particulars of each such condition or term.

(4) A defendant to such an action who applies by counterclaim in the action
for a declaration under section 8(1) of the Ordinance must, with his
counterclaim, serve particulars of the grounds on which he relies in support
of his counterclaim.

20. Particulars of infringements (O. 103, r. 20)

Particulars of infringements of a patent must specify which of the claims in
the specification of the patent are alleged to be infringed and must give at
least one instance of each type of infringement alleged.

21. Particulars of objections (O. 103, r. 21)

(1) Particulars of objections to the validity of a patent must state every
ground on which the validity of the patent is disputed and must include such
particulars as will clearly define every issue which it is intended to raise.

(2) If the grounds stated in the particulars of objections include want of
novelty or want of any inventive step, the particulars must state the manner,
time and place of every prior publication or user relied upon and, if prior
user is alleged, must-

   (a)  specify the name of every person alleged to have made such user,

   (b)  state whether such user is alleged to have continued until the
        priority date of the claim in question or of the invention, as may be
        appropriate, and, if not, the earliest and latest date on which such
        user is alleged to have taken place,

   (c)  contain a description, accompanied by drawings, if necessary,
        sufficient to identify such user, and

   (d)  if such user relates to machinery or apparatus, state whether the
        machinery or apparatus is in existence and where it can be inspected.

(3) If in the case of an existing patent-

   (a)  one of the grounds stated in the particulars of objection is that the
        invention, so far as claimed in any claim of the complete
        specification, is not useful, and

   (b)  it is intended, in connection with that ground, to rely on the fact
        that an example of the invention which is the subject of any such
        claim cannot be made to work, either at all or as described in the
        specification, the particulars must state the fact and identify each
        such claim and must include particulars of each such example,
        specifying the respects in which it is alleged that it does not work
        or does not work as described.

22. Amendment of particulars (O. 103, r. 22)

Without prejudice to Order 20, rule 5, the Court may at any stage of the
proceedings allow a party to amend any particulars served by him under the
foregoing provisions of this Order on such terms as to costs or otherwise as
may be just.

23. Further particulars (O. 103, r. 23)

The Court may at any stage of the proceedings order a party to serve on any
other party further or better particulars of infringements or of objections.

24. Restrictions on admission of evidence (O. 103, r. 24)

(1) Except with the leave of the judge hearing any action or other proceeding
relating to a patent, no evidence shall be admissible in proof of any alleged
infringement, or of any objection to the validity, of the patent, if the
infringement or objection was not raised in the particulars of infringements
or objections, as the case may be.

(2) In any action or other proceeding relating to a patent, evidence which is
not in accordance with a statement contained in particulars of objections to
the validity of the patent shall not be admissible in support of such an
objection unless the judge hearing the proceeding allows the evidence to be
admitted.

(3) If any machinery or apparatus alleged to have been used before the
priority date mentioned in rule 21(2)(b) is in existence at the date of
service of the particulars of objections, no evidence of its user before that
date shall be admissible unless it is proved that the party relying on such
user offered, where the machinery or apparatus is in his possession,
inspection of it to the other parties to the proceedings, or, where it is not,
did his best to obtain inspection of it for those parties.

25. Proceedings for infringement: admissions must be requested (O. 103, r. 25)

(1) In an action for infringement of a patent (whether or not any other relief
is claimed) each party must, within 14 days after service of a reply or answer
or after the expiration of the period fixed for service thereof, write to each
other party from whom he requires an admission for the purpose of the action
or proceedings requesting him to make the admission, and the party receiving
the request must within 14 days after the receipt thereof reply in writing
making the admission or stating that he refuses to make it.

(2) No order shall be made authorizing a party to any such action or
proceedings to serve any interrogatory on any other party unless the
first-mentioned party requested that other party in accordance with paragraph
(1) to admit the facts sought to be proved by the answer to the interrogatory
and the other party refused or failed to comply with the request.

26. Proceedings for infringement: summons for directions (O. 103, r. 26)

(1) In such an action, and in such proceedings, as are referred to in rule
25(1), the plaintiff or petitioner must-

   (a)  within one month after the date on which the last reply to a request
        made under rule 25(1) is received or after the date on which the
        period fixed for making such a reply expires, whichever first occurs,
        or

   (b)  if no request for an admission is made by any party to the  action or
        proceedings, within one month after service of a reply or answer or
        after the expiration of the period fixed for service thereof, take out
        a summons for directions as to the place and mode of trial returnable
        in not less than 21 days, and if the plaintiff or petitioner does not
        take out such a summons in accordance with this paragraph, the
        defendant or respondent, as the case may be, may do so. The summons
        may be heard in chambers or in court as the Court thinks fit.

(2) The Court hearing a summons under this rule may give such directions-

   (a)  for the service of further pleadings or particulars,

   (b)  the discovery of documents,

   (c)  (subject to rule 25(2)) for the service of interrogatories and of
        answers thereto,

   (d)  for the taking by affidavit of evidence relating to matters requiring
        expert knowledge, and for the filing of such affidavits and the
        service of copies thereof on the other parties,

   (e)  for the service on the other parties, by any party desiring to submit
        experimental proof, of full and precise particulars of the experiments
        proposed and of the facts which he claims to be able to establish
        thereby,

   (f)  for the making of experiments, tests, inspections or reports,

   (g)  for the hearing, as a preliminary issue, of any question that may
        arise (including any question as to the construction of the
        specification or other documents), and otherwise as the Court thinks
        necessary or expedient for the purpose of defining and limiting the
        issues to be tried, restricting the number of witnesses to be called
        at the trial of any particular issue and otherwise securing that the
        case shall be disposed of, consistently with adequate hearing, in the
        most expeditious manner. Where evidence is directed to be given by
        affidavit, the deponents must attend at the trial for
        cross-examination unless, with the concurrence of the Court, the
        parties otherwise agree.

(3) Order 24, rules 1 and 2, shall not apply in an action for infringement of
a patent.

(4) No action for a declaration under section 8(1) of the Ordinance shall be
set down for trial unless and until a summons under this rule in the action or
proceedings has been taken out and the directions given on the summons have
been carried out or the time fixed by the Court for carrying them out has
expired.

(5) An action for a declaration under section 8(1) of the Ordinance shall not
be tried sooner than 21 days after the action has been set down for trial.

27. Appointment of scientific adviser (O. 103, r. 27)

(1) In an action for infringement of a patent and in any proceedings under the
Ordinance, the Court may at any time, and on or without the application of any
party, appoint an independent scientific adviser to assist the Court or to
inquire and report on any question of fact or of opinion not involving
questions of law or construction.

(2) The Court may nominate the scientific adviser and shall settle the
question or instructions to be submitted or given to him.

(3) The remuneration of any adviser appointed under this rule shall be fixed
by the Court and shall include the costs of making any report and a proper
daily fee for any day on which he is required to attend before the Court.

(4) Order 40, rules 2, 3, 4 and 6, shall apply in relation to an adviser
appointed under this rule and any report made by him as they apply in relation
to a Court expert and a report made by him.

29. Application for rectification of register of patents in Hong Kong (O. 103,
r. 29)

An application to the Court for an order that the register of patents be
rectified must be made by originating motion, except where it is made by way
of counterclaim in proceedings for infringement or by originating  summons in
proceedings for an order under section 52 of the Trustee  Ordinance ( Cap 29).
(Enacted 1988)

"existing patent" (現存的專利)

"the Act" (法令)

"the Ordinance" (條例)