Hong Kong Regulations

PATENTS (GENERAL) RULES - SECT 3

References to the Registrar under section 13(1)(a) or (b) of the Ordinance

(Past version on 30/06/1997).

PART II

APPLICATIONS FOR STANDARD PATENTS

Right to apply

(1) A reference to the Registrar under section 13(1)(a) or (b) of the
Ordinance shall—

   (a)  be in the specified form;

   (b)  be accompanied by a statement setting out fully the nature of the
        question, the facts upon which the person making the reference relies
        and the order or relief sought; and

   (c)  be accompanied by the prescribed fee.

(2) In the case of a reference under section 13(1)(a) of the Ordinance, the
person making the reference shall, at the same time as he files it, send a
copy of the reference and statement to each of the following persons (not
being a party to the reference)—

   (a)  each person who is alleged in the reference to be entitled to apply
        for the grant of a standard patent for the invention that is the
        subject of the reference;

   (b)  each person whom the person making the reference believes to be the
        inventor or joint inventor of that invention; and

   (c)  if an application for a standard patent for that invention has been
        published before the reference is filed, each person who is shown in
        the register as having a right in or under that application.

(3) In the case of a reference under section 13(1)(b) of the Ordinance, the
person making the reference shall, at the same time as he files it, send a
copy of the reference and statement—

   (a)  to each joint proprietor who is not a party to the reference and who
        has not otherwise indicated his consent to the making of the order or
        the granting of the relief sought;

   (b)  to each of the following persons (not being a party to the
        reference)—

        (i)    each person to whom it is alleged in the reference any right in
               or under the application should be transferred or granted; and

        (ii)   each person whom the person making the reference believes to be
               the inventor or joint inventor of the invention that is the
               subject of the reference; and

   (c)  if an application for a standard patent for that invention has been
        published before the reference is filed, to each person who is shown
        in the register as having a right in or under that application.

(4) The person making the reference shall attach to each copy of the reference
and statement he sends under subsection (2) or (3), as the case may be, a
notice containing the names and addresses of all persons to whom a copy of the
reference and statement is being sent under that subsection, and he shall
notify the Registrar of the names and addresses of those persons.

(5) In addition, if an application for a standard patent for the invention
that is the subject of a reference under section 13(1)(a) or (b) of the
Ordinance has been filed but the application has not been published before the
reference is filed, the Registrar shall send a copy of the reference and
statement to each of the following persons (not being a party to the reference
or a person to whom copies have been sent under subsection (2) or (3), as the
case may be)—

   (a)  each person who is an applicant for the standard patent; and

   (b)  each person who has given notice to the Registrar under section  46 of
        a transaction, instrument or event in relation to that application.

(6) The Registrar shall send a notice containing the names and addresses of
all persons to whom copies of the reference and statement have been sent under
subsection (5) to—

   (a)  each person to whom copies have been sent under that subsection;

   (b)  the person making the reference; and

   (c)  each person whose name and address has been notified to the Registrar
        under subsection (4).

(7) Any person who is sent a copy of the reference and statement under
subsection (2), (3) or (5) and who wishes to oppose the making of
the order or the granting of the relief sought ("the opponent") shall, within
3 months from the date on which the copies are sent to him, file a
counter-statement which shall be in the specified form, shall set out fully
the grounds of opposition and shall be accompanied by the prescribed fee.

(8) The opponent shall, at the same time as he files the counter-statement,
send a copy of it to each of the following persons (not being a party to the
counter-statement)—

   (a)  the person making the reference;

   (b)  each person whose name and address has been notified to him under
        subsection (4); and

   (c)  each person whose name and address has been notified to him under
        subsection (6).

(9) The person making the reference and any other person to whom a copy of the
counter-statement is sent under subsection (8) may, within 3 months from the
date on which it is sent to him, file evidence in support of his case and, if
he files such evidence, he shall send a copy of it—

   (a)  to the opponent; and

   (b)  where the evidence is filed by such other person, to the person making
        the reference.

(10) Within 3 months from the date on which a copy of evidence is sent to
the opponent under subsection (9) or, if no such evidence is filed under that
subsection, within 3 months from the expiry of the time within which evidence
might have been filed, the opponent may file evidence in support of his case
and, if he files such evidence, he shall send a copy of it to—

   (a)  the person making the reference; and

   (b)  any other person who has filed the evidence under subsection

(9).

(11) The person making the reference and any other person to whom a copy of
the opponent's evidence is sent under subsection (10) may, within 3 months
from the date on which the copy is sent to him, file further evidence confined
to matters strictly in reply to the opponent's evidence and, if he files such
further evidence, he shall send a copy of it—

   (a)  to the opponent; and

   (b)  where the further evidence is filed by such other person, to the
        person making the reference.

(12) No further evidence shall be filed except by leave or direction of the
Registrar.

(13) The Registrar may give such directions as he may think fit with regard to
the subsequent procedure. (L.N. 37 of 2004)