The Patents (Transitional Arrangements) Rules are detailed, but essentially there are 5 key categories of transitional phases:
existing registered patents which have been re-registered in Hong Kong (or for which a re-registration application has been filed) as at 27 June 1997 ('the Commencement Date'). These are automatically deemed to be and are treated as Standard Patents, as from the Commencement Date. The first renewal fees are payable on the third anniversary of the date of filing first occurring after 27 June 1997. For example, a patent for which the Hong Kong re-registration application was filed on 10 March 1990 has its first anniversary after the Commencement Date on 10 March 1998, with the third anniversary being 10 March 2001. The first renewal fee will be payable from 10 March 2001.
where a UK patent has been granted but no application for re-registration has been filed before 27 June 1997, the new Registration and Grant procedures (but not the Request for Registration) must be followed. The Request for Grant must be made not later than the earlier of (i) 27 June 1998 or (ii) five years after the UK date of grant.
where a UK patent has been published before the Commencement Date but not yet granted but is granted by 27 June 1998, the new grant procedures (but not the Request for Registration) must be followed. The Request for Grant must be made not later than 6 months after the UK date of grant.
where a UK patent has been published before the Commencement Date but not yet granted, and is not granted until after 27 June 1998, the full set of procedures must be followed under the new law, and the initial Request to Record must be filed no later than 27 December 1998. (There is one exception to this rule; for pending applications filed under the 1949 Act - of which there are apparently still some but it cannot be many - only the request for grant needs to be made on whichever is the earlier of (i) six months after the date of grant or (ii) 20 years after the date of filing of the complete specification for the patent ie. the maximum life of the patent.)
where a UK or PRC patent has been published less than 6 months before the Commencement Date, it will be possible to file - adopting the full set of procedures under the new law - provided that the 6 month deadline is observed. (This deadline is a strict one. No extension of time is possible under the rules.)
There is also an express provision that any acts done before the coming into effect of the new law will infringe an existing re-registered Hong Kong patent in accordance with the old law, but that from then on existing re-registered patents will be infringed in accordance with the new law.
Further information on the above may be obtained via Linklaters & Paines Hong Kong office or via any of the other nine Linklaters & Paines offices world-wide, located in Singapore, Tokyo, London, Brussels, Paris, Frankfurt, New York, Washington D.C. and Moscow. Contact details for the various L&P offices worldwide are available via the Linklaters & Paines corporate listing c/o Business Monitor Online - http://www.businessmonitor.co.uk
c Linklaters & Paines 1997 - Tel +852 2842 4888
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