Hong Kong Regulations

PATENTS (TRANSITIONAL ARRANGEMENTS) RULES - SCHEDULE 2

APPLICATION OF THE ORDINANCE FOR PURPOSES OF SECTION 6 OF THESE RULES

[sections 6 & 15]

PART I

MODIFICATION OF SECTIONS 23 TO 27 OF THE ORDINANCE AS APPLIED FOR PURPOSES OF
SECTION 6(1) OF THESE RULES

The application of sections 23 to 27 of the Ordinance for the purposes of
section 6(1) of these rules has effect subject to the following modifications-

   (a)  in sections 23 and 24 of the Ordinance, for "the designated patent
        office" wherever it appears read "the United Kingdom Patent Office or
        the European Patent Office (as the case may be)";

   (b)  sections 23(3)(c) and 24(1)(d) of the Ordinance have no application;

   (c)  for section 24(2) of the Ordinance read- "(2) If the earliest filing
        with the Registrar of any part of a request for registration and grant
        occurred after the earlier of-

   (a)  the date occurring 12 months after the commencement date; and

   (b)  the date occurring 5 years after the date of grant of the existing
        1949 Act or 1977 Act patent (as the case may be), then the request
        shall not be dealt with as an application for a patent.".

PART II

APPLICATION OF THE ORDINANCE FOR PURPOSES OF SECTION 6(4) OF THESE RULES WHERE
THE PATENT OR PATENT APPLICATION IS BASED ON AN EXISTING 1949 ACT PATENT

1. As from the commencement date, and subject to the modifications specified
in paragraph 2, the following provisions of the Ordinance shall apply in
relation to every application for a standard patent pursuant to section 6(1)
of these rules where the existing patent is a 1949 Act patent and to every
standard patent granted pursuant to any such application- sections 2 to 7, 9,
11, 28 to 32, 36 to 38, 39(1), 47 to 54, 62, 63, 68 to 75, 80, 81, 85 to 87,
89, 90, 104 to 107, 130 to 133, 135 to 143, 145 and 147 to 153.

2. For the purposes of paragraph 1, the application of the provisions of the
Ordinance specified in column 1 shall have effect subject to the modifications
specified opposite those provisions in column 2-

Provision of the Ordinance Modification section 3 (a) In paragraphs (i) and
(ii), for "request to record" read "request for registration and grant".

   (b)  Paragraphs (iii) to (vi) have no application. section 4 For the
        definitions in subsection (1) read-

""designated patent" (指定專利) means an existing 1949 Act patent;

"designated patent application" (指定專利申請) means an application in
the United Kingdom Patent Office for a 1949 Act patent the complete
specification of which has been published under the law of the United Kingdom
Patent Office;

" designated patent office" (指定專利當局) means the United Kingdom
Patent Office.". section 5 (a) Subsection (1)(a) has no application.

   (b)  For subsection (2)(d) read-

"(d) to a designated patent application being published is a reference to a
specification of an application for a 1949 Act patent being published under
the law of the United Kingdom Patent Office;". section 6 Subsection (5) has no
application.

3. Paragraphs 1 and 2 have effect-

   (a)  subject to sections 5, 11 and 13 of these rules;

   (b)  without prejudice to sections 155 to 157 of the Ordinance (which
        apply, in certain circumstances, provisions of the Ordinance in
        relation to certain patents).

PART III

APPLICATION OF THE ORDINANCE FOR PURPOSES OF SECTION 6(4) OF THESE RULES WHERE
THE PATENT OR PATENT APPLICATION IS BASED ON AN EXISTING 1977 ACT PATENT

1. As from the commencement date, and subject to the modifications specified
in paragraph 2, the following provisions of the Ordinance shall apply in
relation to every application for a standard patent pursuant to section 6(1)
of these rules where the existing patent is a 1977 Act patent and to every
standard patent granted pursuant to any such application- sections 2 to 7, 9,
11, 28 to 32, 36 to 41, 43, 44, 46 to 56, 62 to 87, 89, 90 to 107, 130 to 143
and 145 to 153.

2. For the purposes of paragraph 1, the application of the provisions of the
Ordinance specified in column 1 shall have effect subject to the modifications
specified opposite those provisions in column 2-

Provision of the Ordinance Modification section 3 (a) In paragraphs (i) and
(ii), for "request to record" read "request for registration and grant".

   (b)  Paragraph (iii) has no application.

   (c)  In paragraph (iv), for "publication of a request to record" read
        "grant of a standard patent". section 4 For the definitions in
        subsection (1) read-

""designated patent" (指定專利) means an existing 1977 Act patent;

"designated patent application" (指定專利申請) means-

   (a)  an application in the United Kingdom Patent Office for a 1977 Act
        patent, which application has been published under the law of the
        United Kingdom Patent Office;

   (b)  an application in the European Patent Office for a European patent
        (UK), which application has been published under the law of the
        European Patent Office;

   (c)  an international application which has been published and which has
        validly entered its national phase in the United Kingdom Patent Office
        or the European Patent Office (as the case may be);

" designated patent office" (指定專利當局) means-

   (a)  the United Kingdom Patent Office; or

   (b)  in relation to a European patent (UK) or an application for a European
        patent (UK), the European Patent Office.". section 91(1) (a) In
        paragraph (d)-

   (i)  for "application for the patent" read "application for the
        corresponding 1977 Act patent";

   (ii) for "application for a patent" read "application for a corresponding
        1977 Act patent".

   (b)  In paragraph (e), for "application for the patent" read "application
        for the corresponding 1977 Act patent". section 94 In subsections
        (2)(a) and (3)(a), for "standard patent" read "corresponding 1977 Act
        patent". section 103 In subsection (3)(a), for "application" read
        "application for a corresponding 1977 Act patent".

3. Paragraphs 1 and 2 have effect-

   (a)  subject to sections 6 and 13 of these rules;

   (b)  without prejudice to sections 155 to 157 of the Ordinance (which
        apply, in certain circumstances, provisions of the Ordinance in
        relation to certain patents). ""designated patent" (指定專利)
        "designated patent application" (指定專利申請) "
        designated patent office" (指定專利當局)