SOLICITORS (TRADE MARKS AND PATENTS) COSTS RULES - CHAPTER 159I SOLICITORS (TRADE MARKS AND PATENTS) COSTS RULES - LONG TITLE Empowering section VerDate:30/06/1997 (Cap 159 section 74) [18 August 1967] (L.N. 131 of 1967) SOLICITORS (TRADE MARKS AND PATENTS) COSTS RULES - RULE 1 Citation VerDate:30/06/1997 These rules may be cited as the Solicitors (Trade Marks and Patents) Costs Rules. (L.N. 143 of 1975) SOLICITORS (TRADE MARKS AND PATENTS) COSTS RULES - RULE 2 Interpretation VerDate:04/04/2003 (1) In these rules, unless the context otherwise requires- "non-contentious business" (非爭訟事務) means any trade mark or patent business done by and as a solicitor which is not contentious trade mark or patent business; "Registrar" (處長) means- (a) in Part I of the Schedule, the Registrar of Trade Marks appointed by the Chief Executive; and (b) in Part II of the Schedule, the Registrar of Patents appointed by the Chief Executive; (L.N. 316 of 1992; 11 of 1999 s. 3) "register" (註冊紀錄冊) means- (a) in Part I of the Schedule, the register of trade marks kept under the Trade Marks Ordinance (Cap 559); and (35 of 2000 s. 98) (b) in Part II of the Schedule, the register of patents kept under the Registration of Patents Ordinance (Cap 42)*. (2) In Part I of the Schedule, the references by numbers to sections and to rules are references to sections and rules of the Trade Marks Ordinance (Cap 559) and the Trade Marks Rules (Cap 559 sub. leg. A), respectively. (35 of 2000 s. 98) (3) In Part II of the Schedule- (a) the references by numbers to sections and to rules are references to sections and rules of the Registration of Patents Ordinance (Cap 42)* and the Registration of Patents Rules (Cap 42 sub. leg. A)#, respectively; and (b) "Schedule to (Fees) Rules" means the Schedule to the Registration of Patents (Fees) Rules (Cap 42 sub. leg. B)#. (L.N. 143 of 1975; 25 of 1979 s. 12) ___________________________________________________________________________ Note: * Repealed - see 52 of 1997 s. 154. # Repealed - see 2 of 2001 s. 28. "non-contentious business" (非爭訟事務) "Registrar" (處長) "register" (註冊紀錄冊) "Schedule to (Fees) Rules" SOLICITORS (TRADE MARKS AND PATENTS) COSTS RULES - RULE 3 Scale of costs in certain non-contentious matters VerDate:30/06/1997 (1) Subject to paragraphs (2) and (3), the scale of costs contained in the Schedule shall be the scale of costs for solicitors in relation to the non-contentious business specified therein. (2) In the case of any non-contentious business specified in item 3 or 11 of the Schedule, a solicitor may elect that the costs shall be determined in accordance with rule 4 at a rate not less than if they were determined in accordance with the Schedule. (3) Where a solicitor makes the election referred to in paragraph (2), he shall before undertaking the business notify the client in writing. (L.N. 143 of 1975; L.N. 148 of 1996) SOLICITORS (TRADE MARKS AND PATENTS) COSTS RULES - RULE 4 Costs in other non-contentious business VerDate:30/06/1997 Subject to rule 3, a solicitor's costs in relation to non-contentious business shall be such sum as may be fair and reasonable, having regard to all the circumstances of the case and, in particular, to- (a) the complexity of the matter or the difficulty or novelty of the questions raised; (b) the skill, labour, specialized knowledge and responsibility involved on the part of the solicitor; (c) the number and importance of the documents prepared or perused without regard to length; (d) the place where and circumstances in which the business or any part thereof is transacted; (e) the time expended by the solicitor; (f) where money or property is involved, its amount or value; and (g) the importance of the matter to the client. SOLICITORS (TRADE MARKS AND PATENTS) COSTS RULES - RULE 5 Application VerDate:30/06/1997 (1) Non-contentious trade mark and patent business for which instructions were accepted before 27 July 1984 shall continue to be governed by these rules as they stood before they were amended by the Solicitors (Trade Marks and Patents) Costs (Amendment) Rules 1984 (L.N. 246 of 1984). (2) Non-contentious trade mark and patent business for which instructions were accepted on or after 27 July 1984 but before the date of coming into operation of the Solicitors (Trade Marks and Patents) Costs (Amendment) Rules 1989 (L.N. 344 of 1989) shall continue to be governed by these rules as they stood before the date the Solicitors (Trade Marks and Patents) Costs (Amendment) Rules 1989 (L.N. 344 of 1989) come into operation. (3) These rules as amended by the Solicitors (Trade Marks and Patents) Costs (Amendment) Rules 1989 (L.N. 344 of 1989) ("the amending rules") shall apply to all non-contentious trade mark and patent business for which instructions are accepted on or after the date of coming into operation of the amending rules. (L.N. 344 of 1989) SOLICITORS (TRADE MARKS AND PATENTS) COSTS RULES - SCHEDULE SCHEDULE VerDate:30/06/1997 [rules 2 & 3] PART I SCALE OF COSTS IN NON-CONTENTIOUS TRADE MARK BUSINESS Item Section and Rule Subject Matter Costs $ 1. Section 7, rules 103-105 Application to Registrar for a sealed, certified copy of any entry in the register 600 2. Sections 9, 10 and 13, rules 9 and 11 Application for registration of trade mark in Part A or Part B of the register 3000 3. Section 9 Preparation and filing of each declaration of distinctiveness 4000 4. Section 13A, rule 9(2) Convention priority 1000 5. Sections 14 and 17, rules 22 and 37 Obtaining certificates of registration, including receiving notice to advertise, attending to such advertisement and applying for certificate 2000 6. Sections 41, 41A and 42, rules 40-43 Assignment of a trade mark with goodwill $3500 and if assignment is in respect of more than one mark, $500 for each additional mark covered by the same assignment. 7. Sections 41, 41A and 42, rules 40-43 and 45 Assignment of a trade mark without goodwill $4500 and if the assignment is in respect of more than one mark, $500 for each additional mark covered by the same assignment. 8. Section 45, rules 58 and 58A Renewal of registration of a trade mark 2500 9. Section 50, rule 66 (a) Request to Registrar to correct any error in name, address, etc. (b) Additional mark 1200 350 10. Section 51, rules 70-73 Application to Registrar for leave to amend a trade mark, attending advertising and correspondence with Registrar and Government Printer concerning advertisement $3500 and if application is in respect of more than one class, $600 for each additional class. 11. Section 58, rule 79 Application for registration as a registered user, including preparation of registered user agreement $4500 and if the application is in respect of more than one mark, $500 for each additional mark covered by the same application. 12. Rule 91 Application to Registrar for uncontested extension of time 500 13 Section 73, rule 108(1) Official search 750 14. Rule 108(2) Unofficial search to determine whether a particular trade mark is registered or has been applied for 1000 PART II SCALE OF COSTS IN NON-CONTENTIOUS PATENT BUSINESS Item Section and Rule Subject Matter Costs $ 15. Section 3, rule 2 Application for registration of a United Kingdom patent 5000 16. Schedule to (Fees) Rules (items 4 and 5) Application to Registrar for a sealed, certified copy of any entry in the register 600 17. Section 10, rule 4 Assignment $3500 and if the assignment is in respect of more than one patent, $500 for each additional patent covered by the same assignment. 18. Schedule to (Fees) Rules (items 6, 7 and 8) (a) Request to Registrar to make any changes in name, address, description, etc. (b) For each additional simultaneous request to make the same change 1200 350 19. Schedule to (Fees) Rules (items) Search to determine whether a particular patent is registered 1000 (L.N. 148 of 1996)