1.1 What are the principal sources of law and regulation relating to patents and patent litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties)
Before the change of sovereignty from the United Kingdom (‘UK’) to the People’s Republic of China (‘PRC’) on 1 July 1997, Hong Kong was subject to the English patent registration system and enforced patents obtained in the UK, by virtue of the Registration of Patents Ordinance, Cap 42 (‘RPO’).
On 27 June 1997, the Patents Ordinance, Chapter 514 (‘PO’) and its subsidiary legislation, Patents (Designation of Patent Offices) Notice, Chapter 514A; Patents (Transitional Arrangements ) Rules, Chapter 514B and Patent (General) Rules, Chapter 514C (‘PGR’), came into force and replaced the RPO. However, the RPO continues to be relevant for infringements committed and applications for registration pending before 27 June 1997.
Under the PO, there are two types of patent in Hong Kong, namely the ‘Standard Patent’ (the usual 20-year patent) and the ‘Short-term Patent’ (an 8-year patent). They are registered at the Patents Registry of the Hong Kong Intellectual Property Department (‘Patents Registry’).
Standard patents
Under the PO, a patent that has been registered in a ‘designated patent office’ (‘DPO’), namely the State Intellectual Property Office of the PRC, the European Patent Office (in respect of patents granted under the European Patent Convention designating the UK) and the UK Patent Office, may be registered as a standard patent (PO, ss 10–30).
The person entitled to apply for a standard patent is the person named as the applicant in the DPO application or his successor in title in Hong Kong, or, in preference to such persons, the person entitled to the property in the invention in Hong Kong (PO, s 12).
There is no separate examination process in Hong Kong. There are two stages to the application for a standard patent, namely (1) ‘Request to Record’ and (2) ‘Request for Registration and Grant’. The applicant must file a request to record the designated patent application at the Patents Registry within six months of publication of the application in the DPO (PO, s 15(1)). If such request is satisfactory after an examination of the minimum and formal requirements, the second stage is to file a request for registration and grant in Hong Kong within six months of publication of the grant at the DPO (PO, s 23).
When the formal requirements for the second stage are also satisfied, the Patents Registry will register the designated patent in the register, grant a standard patent for a maximum term of 20 years for the invention shown in the published specification and issue a certificate to that effect (PO, s 27). The Hong Kong registered patent then has a life of its own, independent of the patent at the DPO.
*With gratitude for the help of my assistant Henry Hu
Short-term patents
Short-term patents can be granted in Hong Kong independent of any overseas patents. Once granted, short-term patents operate generally in the same way as standard patents, but with an 8-year life.
An application for a short-term patent must contain:
searching authorities, ie the three DPOs and the International Searching Authorities appointed under Article 16 of the Patent Cooperation Treaty (PO, s 113(8)).
In addition, an applicant in an international application seeking a patent for a utility model designating PRC may apply for a short-term patent for the invention disclosed in that application at any time within six months after the entry into the national phase of the international application in the PRC (PO, s 125).
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?
PO is the principal ordinance and the PGR, Patents (Designation of Patent Offices) Notice and Patents (Transitional Arrangements ) Rules are subsidiary legislations of the PO.
In case of disputes, the PO prevails because no subsidiary legislation should be inconsistent with the provisions of the principal ordinance (Interpretation and General Clauses Ordinance, Cap 1, s 28(1)).
2.1 In which courts are patents enforced? Are they specialised patents courts? If not, what level of expertise can a patent holder expect from the courts?
Patent proceedings are not assigned to any specialist court or division in Hong Kong. A patentee or its exclusive licensee may enforce their patent rights (both standard and short-term) at the Court of First Instance, High Court (‘CFI’). As the CFI is not a specialist court, expert witnesses are frequently retained by the parties, to assist the judges in making decisions.
2.2 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?
The CFI is bound by decisions of the higher courts in Hong Kong, ie the Court of Appeal and Court of Final Appeal. Under Art 84 of the Basic Law of Hong Kong, the courts in Hong Kong ‘may’ refer to precedents of other common law jurisdictions. The word ‘may’ means that opinions/decisions of other common law jurisdictions are not binding in Hong Kong.
2.3 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or government agency (eg the Patent Office)?
The CFI may deal with infringement and invalidity simultaneously. Usually, the defendant to infringement proceedings may seek to challenge the validity of the patent by way of defence.
In addition, the validity of a patent may be put in issue:
The Patents Registry does not itself handle invalidity issues, other than revocation following revocation in the DPO.
2.4 Who can represent parties before the courts handling patent litigation and/or the government agency dealing with patent validity issues?
Hong Kong lawyers consist of solicitors and barristers. Only barristers have rights of audience before judges in open court in CFI and the upper courts (Court of Appeal and Court of Final Appeal).
Barristers are instructed by solicitors to represent the parties in the patent proceedings held at the CFI and the upper courts. Solicitors would be responsible for taking instructions from the clients, drafting court documents and providing instructions to the barristers.
2.5 What is the language of the proceedings? Is there a choice of language?
Both English and Chinese are official languages in Hong Kong and the parties may choose to conduct their proceedings in English or Chinese (Official Languages Ordinance, Chapter 5, s 3).
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
The court is concerned with enforcement of a registered Hong Kong patent against the infringing activities under the PO. For example, the court may grant an injunction restraining the infringers from exporting the infringing products out of Hong Kong. It is not usual for the court to grant injunctions beyond the rights established by the plaintiff, but this depends on the circumstances of the case.
If there is evidence to prove that the defendant is about to dissipate his assets, so as to make himself judgment proof, the court may grant a Mareva injunction seizing the defendant’s assets in Hong Kong or worldwide (Babanaft International Co SA v Bassatne [1990] 1 Ch 13). Such injunctions are subject to the court’s discretion and not easily granted.
2.7 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
Where the parties to patent proceedings have commenced legal action in both Hong Kong and a foreign country in respect of the same patent, the court may or may not stay the Hong Kong action. The fundamental principle is that the court should choose the forum in which the case can be tried more suitably in the interests of all the parties and justice.
The test on applications for a stay on the basis of forum non conveniens is well-known. It is derived from the decision of the House of Lords in Spiliada Maritime Corp v Cansulex Ltd [1987] 1 AC 460 and adopted by the courts of Hong Kong. The relevant principles have been summarised by the Hong Kong Court of Appeal in The Adhiguna Meranti [1987] HKLR 904 as the following three-stage process:
If it could not be shown that the foreign court was clearly and distinctly a more appropriate forum than Hong Kong, it does not justify a stay of the Hong Kong proceedings.
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
PO, s 73 (Prevention of direct use of invention) provides: ‘A patent while it is in force shall confer on its proprietor the right to prevent all third parties not having his consent from doing in Hong Kong all or any of the following
Further, PO, s 74 (Prevention of indirect use of invention) provides: ‘A patent while it is in force shall also confer on its proprietor the right to prevent all third parties not having his consent from supplying or offering to supply in Hong Kong a person, other than a party entitled to work the patented invention, with means, relating to an essential element of that invention, for putting it into effect, when the third party knows, or it is obvious in the circumstances to a reasonable person, that the said means are suitable and intended for putting that invention into effect in Hong Kong.’
It is necessary to show that the ‘Invention’ has in some aspects been taken. The invention
is defined in s 76 as: ‘that specified in a claim of the specification of the application/patent, as interpreted by the description and any drawings contained in that specification; and the extent of the protection conferred by a patent or an application for a patent shall be determined accordingly.’
This involves construing the specification and claims to determine whether the product or process in question falls within the claims. If not, there can be no infringement. If yes, it is then necessary in order to determine whether there has been infringement:
With one exception (offering a process for use), knowledge or intention of the infringer is irrelevant to ‘direct’ infringement. However, the infringer’s knowledge is relevant in the case of infringement involving an offer of a process for use and ‘indirect’ infringement. Lack of knowledge may also provide an answer to a claim for damages or an account of profits, even where lack of knowledge is irrelevant to a finding of infringement.
Doctrine of equivalents
The following doctrine of equivalents laid down by Lord Diplock in Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183 at 242-244 was referred by the Hong Kong Court and applied in Improver Corp v Ramond Industrial Ltd [1990] 2 HKC 300:
‘A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.’
Under s 75 of the PO, the rights conferred by a patent do not extend to acts done privately for non-commercial purposes (s 75(a)), acts done for experimental purposes (s 75(b)), the preparation of medicines in limited circumstances (s 75(c)), and use on ships, aircrafts etc temporarily or accidentally entering Hong Kong (s 75(d)–(f)).
The defendant may challenge the validity of the patent by way of defence and/or counterclaim.
Also, the defendant may argue that the alleged infringing acts do not fall within the statutory definition of infringement and seek to obtain a declaration of non-infringement from the court.
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
Although there are competition laws applicable in the telecommunications and broadcasting industries in Hong Kong, there are no general competition or antitrust laws in Hong Kong.
Under s 91 of the PO, the court may revoke a patent (standard or short-term) on any of the following grounds, namely that:
3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
Under s 91(2) of the PO, where the court determines that one of the grounds for invalidation has been established, but only so as to invalidate the patent to a limited extent, the court may order that the patent should be revoked unless within a specified time the specification is amended to the satisfaction of the court.
That is to say, unless the patentee amends the patent by deleting the invalid/inappropriate part(s) of the same in accordance with the court order, the patent is revoked by the court.
There are only standard and short-term patents in Hong Kong, and the court cannot transform either of them into utility patents.
Under s 102 of the PO, the court has power in any proceedings before it where the validity of a patent is put in issue, to allow the proprietor to amend the specification in any manner and subject to such terms as to advertising the proposed amendment and costs or otherwise, as it thinks fit.
Any amendment is deemed always to have had effect from the date of grant of the patent (PO, s 102(3)) but any person may give notice of opposition to any proposed amendment (PO, s 102(2)).
The decision to allow amendment is discretionary. The court will generally take account of the patentee’s conduct in making its decision, including whether it has delayed in applying for the amendment. Generally, deletion of invalid claims is more likely to be accepted than those which seek to amend invalid claims so as to validate them (Nutrinova Nutrition v Scanchem UK (No 2) [2001] FSR 831).
No damages are awarded in respect of pre-amendment infringement ‘unless the court is satisfied that the specification of the patent as originally published was framed in good faith and with reasonable skill and knowledge’ (PO, s 81(4)).
3.7 Are there any grounds on which an otherwise valid patent can be deemed unenforceable, owing to misconduct by the patent holder, or for some other reason (eg expiry of time limit)?
A patent cannot be deemed unenforceable owing to reasons of misconduct of the patentee. If ‘infringement’ of a patent occurs after expiry of the patent due to non-payment of renewal fees, late payment of the renewal fees (within permitted statutory periods) will render the infringing act as actionable.
3.8 Can a patent holder bring a law suit claiming both patent infringement and unfair competition for the same set of facts?
There is no competition law in Hong Kong save to that applicable in the telecommunications and broadcasting industries. In so far as the unfair competition activities constitute common law ‘passing-off’, this may also be actionable in the same law suit.
4.1 Who can sue for patent infringement (patent holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?
Under s 86 of the PO, the patentee and the exclusive licensee can sue for patent infringement. If the exclusive licensee initiates proceedings against the infringer, the patentee must, unless he consents to join as a plaintiff, be joined as a defendant; but he is not liable for any costs unless he enters an appearance and takes part in the proceedings.
There are no provisions in the PO giving non-exclusive licensees or distributors the right to sue for patent infringement. In the circumstances, it is important for those non-exclusive licensees and distributors to stipulate in the relevant licence or distributorship agreement that the patentee should take action for patent infringement.
The PO does not state that it is necessary for exclusive licensees to register their rights at the Patents Registry before they have the right to sue. However, s 87 of the PO stipulates that where an exclusive licensee or an assignee of a patent does not register the prescribed particulars of the instrument within six months of the date of the relevant instrument, he is not entitled to damages or an account of profits in respect of any infringement of the patent occurring after the date of the relevant instrument and before the prescribed particulars of the instrument are registered.
4.2 Under what conditions, if any, can an alleged infringer bring a law suit to obtain a declaratory judgment on non-infringement?
Under s 90 of the PO, a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent may be made by the court in proceedings between the person doing or proposing to do the act and the proprietor of the patent, notwithstanding that no allegation of infringement has been made, provided that:
(1) the person has applied in writing to the owner of the patent for a written
acknowledgement of non-infringement with full particulars in writing of
the act; and
(2) The proprietor has refused or failed to give such acknowledgement.
The burden of proving non-infringement lies on the party seeking the declaration (Rohm and Haas Co v Collag Ltd [2002] FSR 445).
Under s 89 of the PO, if a person (whether or not the proprietor of, or entitled to any right in, a patent) has threatened another person with proceedings for infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may bring proceedings in the court against the person making the threats for:
The patent holder may defend any claim for groundless threats if he proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent; and the patent alleged to be infringed is not shown by the person aggrieved to be invalid in a relevant respect (PO, s 89(2)).
However, proceedings for groundless threats may not be brought as regards a threat to bring proceedings for an infringement alleged to consist of making a product for putting on the market or of using a process, ie direct infringement (PO, s 89(4)).
4.3 Who can be sued for patent infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to patent infringement by someone else?
Any person infringing a patent by himself, or through his servants or agents, is potentially liable and may be made a defendant to proceedings.
Directors of a company would not normally be liable simply because their company has been engaged in infringing activities unless it can be proved that the directors have personally committed or directed the infringing acts or the company committed the infringements as their agent, or that they expressly authorised the same (Kabushiki Kaisha Yakult Honsha v Yakudo Group Holdings Ltd [2004] HKEC 253).
Under Ord 15, r 4 of the Rules of High Court, Chapter 4A (‘RHC’), the plaintiff or the defendant may seek to join further parties as co-plaintiffs or co-defendants so long as:
A plaintiff may discontinue the action or withdraw any particular claim made by him, as against any or all of the defendants. Likewise, a defendant may discontinue a counterclaim or withdraw any particular claim made by him therein, as against any or all of the parties against whom it is made.
Normally, the party who seeks to discontinue the action or withdraw the claim pays for the costs the parties incurred in defending the action or the claim up to the date of notice to discontinue (Ord 62, r 10, RHC]. Costs are taxed (assessed) by the court if not agreed by the parties.
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
In addition to the commencement of legal action, trade mark and copyright owners may seek to enforce their rights by lodging a complaint at the Customs & Excise Department (‘Customs Department’) if they can prove that they are the owners of the relevant trade marks/copyright in Hong Kong and the infringing products have infringed their trade mark and copyright.
However, the Customs Department does not deal with complaints in respect of patent infringement. It is possible that the Customs Department may not have the necessary expertise to examine the infringing products against the relevant patent specifications and claims.
Therefore, the patent holder may enforce its rights by threatening or taking legal action only.
Acts of patent infringement have not been made criminal offences in Hong Kong. However, the following acts are made offences under the PO:
Not for patents.
5.4 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve patent disputes? If arbitration is available to assess invalidity, will your Patent Office recognise and execute an arbitral award declaring a patent invalid?
There is no alternative dispute resolution procedure available for determining disputes of patent infringement. However, the parties may choose to resolve their disputes by way of conciliation or mediation without prejudice to their rights to bring the matter to the court.
In patent licensing/contract disputes, the parties can provide for disputes to be handled by arbitration, but this is unlikely to resolve patent validity issues.
An arbitral award may, with the leave of the court, be enforced in the same manner as a judgment or order to the same effect. If leave is given, the court may enter judgment in terms of the award, order or direction (Arbitration Ordinance, Chapter 341, s 2GG).
Before the commencement of legal proceeding, the plaintiff patentee may instruct his solicitor to issue a letter demanding the defendant infringer to cease the infringing activities and comply with other requests of the plaintiff, such as payment of damages, delivery up of the infringing products, disclosure of the identity of the persons involved in the infringing activities.
If the defendant refuses to comply with the request or if the plaintiff chooses not to issue such preliminary letter, the plaintiff may file a writ of summons at court: this is normally the first document to be filed in a civil action. The writ at least states the general ‘endorsement of claim’ indicating what remedies the plaintiff seeks to claim against the defendant.
If the defendant refuses to comply with the remedies stated in the endorsement of claim, he has to file an acknowledgement of service form indicating that he will contest the claim. The court action then proceeds as follows:
In cases of urgency (eg where there is a large impending shipment of infringing products) and where there is a strong prima facie case of infringement, an application can be made to the court for an ex parte injunction for detention, custody, preservation, inspection and delivery up of infringing articles as well as documentation pertaining to the infringing acts.
In cases where there is a real likelihood of destruction of evidence, the principles under the UK Court of Appeal’s decision in Anton Piller KG v Manufacturing Process Ltd [1976] Ch 55, CA, may be invoked to make an ex parte application for a court order requiring the defendant to permit the plaintiff’s solicitors and representatives to enter into the defendant’s premises and search. To obtain such order there must be (1) a strong prima facie case of infringement (2) a real possibility that evidence may be destroyed and (3) a balance in favour of granting the order.
All civil actions to be tried in Hong Kong, including patent proceedings, with limited exceptions (eg, defamation, malicious prosecution or false imprisonment), are tried without a jury unless the court in its discretion orders it to be tried with a jury. In practice, all patent cases are tried by a judge alone (High Court Ordinance, Chapter 4, s 33A).
6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?
Documents
The parties each prepare a list of documents showing all documents which are or have been in their possession, custody or power relating to any matter in question between them in the action. The parties may inspect and obtain copies of the documents in the list of documents of the other side. Generally, no documents can be adduced by the parties unless they have been referred to in the list of documents.
Witness statements
The parties exchange and file their witness statements and expert reports (if any) before the trial. Such statements/reports stand as evidence-in-chief. The opposing party may cross-examine the witnesses/experts. After cross-examination, the party who called the witness may re-examine the witness clarifying the issues raised in the cross-examination.
Affidavits
For applications for summary judgment, ex parte injunctions, Anton Piller orders or other preliminary relief, the applicant usually files affidavit evidence in support of their application. It is not necessary for those persons who have made the affidavit to give evidence in the court or be cross-examined by the opposing party.
Court-appointed expert
Hong Kong adopts the adversarial system. It is for the parties to prove or defend their case and the court does not normally appoint an expert to give evidence.
6.4 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
The parties are entitled to inspect any documents referred to in pleadings or affidavits or witness statements (RHC, Ord 24, r 10). Normally, the court orders the parties to prepare a list of documents showing all documents which are, or have been, in their possession, custody or power relating to any matter in question between them in the action. The parties may inspect or obtain copies of the documents in the list of documents.
If a party is not satisfied that the other side has disclosed all relevant documents, they may make an application to the court requiring the other side to make an affidavit stating whether any document specified or described in the application or any class of document has at any time been in his possession, custody or power, and if not then when he parted with it and what has become of it (RHC, Ord 24, r 7). This application must be supported by an affidavit stating the belief of the deponent that the party from whom discovery is sought has, or at some time had, in his possession, custody or power the document specified in the application and that it relates to one or more of the matters in question in the cause or matter.
6.5 What level of proof is required for establishing infringement or invalidity?
The court adopts the civil standard of proof. If the person claiming for patent infringement or invalidity can prove to the satisfaction of the court that ‘it is more likely than not’ the patent is infringed or invalid, the court will order accordingly. In other words, the standard is satisfied if there is greater than 50% chance that the proposition is true.
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
The length of patent infringement proceedings depends on the complexity of the patent in question, the number of claims infringed and the defence raised. Assuming the parties have not delayed the progress of the proceedings and subject to the parties’ right of appeal, patent infringement proceedings may be concluded by the CFI in 18–24 months.
It is possible to expedite the process by the plaintiff making an application for summary judgment if they can prove that there is no arguable defence on the part of the defendant (RHC, Ord 14). The hearing is effectively a ‘mini-trial’.
The court will determine the plaintiff’s application at a hearing based on the affidavits filed by the parties. If the application for summary judgment is unsuccessful, the plaintiff will have to pay the defendant’s costs incurred in defending the summary judgment application and thereafter proceed the case for trial.
Alternatively, the parties can apply for a ‘speedy trial’ of the case, which involves the usual procedural directions but with expedited time periods for compliance. However, this does require the cooperation of both parties to meet the tighter deadlines imposed.
6.7 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of a defendant?
If the patent in question is a short-term patent, the defendant may request that the plaintiff provide prima facie evidence proving the validity of the short-term patent before the continuance of the proceedings in accordance with s 129 of the PO.
In reply, the plaintiff may produce a search report of a prescribed search authority in support of the validity of the short-term patent.
The defendant may try to delay the proceedings by filing applications on certain preliminary issues, including summary judgment to strike out the plaintiff’s causes of action, eg the plaintiff is not entitled to the patent, the patent is invalid, the alleged infringing activities do not fall within the specification of the patent. The defendant may also seek extensions of time for compliance with court deadlines. In complex litigation, such extensions are often granted, until it becomes clear to the court that the defendant is simply engaging in delaying tactics.
The plaintiff should resist all such applications, including extensions of time. ‘Unless Orders’ can be obtained, whereby the defendant’s defence will be struck out and the plaintiff entitled to judgment if a deadline is not complied with.
In all the above extensions, the defendant would be penalised on costs.
7.1 What remedies are available against a patent infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?
Under s 80 of the PO, the patentee may seek the following relief against a patent infringer:
7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or consumers?
It is possible for the plaintiff to obtain a final injunction against the defendant, whether acting by itself, its directors, officers, employees, servants, agents, representatives, nominees or associates or related companies or subsidiaries etc, from infringing the patent in question.
Unless the defendant infringer’s suppliers or customers are parties to the proceedings, the court would not impose an injunction against them.
7.3 What monetary remedies are available against a patent infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?
Similar to common tort actions, monetary remedies in patent actions are assessed on the basis that the plaintiff should be placed in the position which he would have been if no infringement had occurred. The plaintiff will recover all reasonable foreseeable loss caused by the infringement.
Loss of license fees
Where the plaintiff has licensed his patent, the measure of damages may be based on the licence fee he would have received had the defendant entered into a licensing agreement with the plaintiff.
Account of profits
Alternatively, the plaintiff is entitled to the profits generated by the defendant due to the infringement. Where the plaintiff is entitled to damages or an account of profits, they must make an election.
The court will not, in respect of the same infringement, award both damages and an account of profits (PO, s 80(2)). Also, the court will not award damages, or an order for an account of profits, against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed (PO, s 81(2)).
Where a patent has been amended, no damages are awarded for an infringement of the patent committed before the date of amendment or of the recording of the amendment at the Patents Registry, as the case may be, unless the court is satisfied that the specification of the patent as originally published was framed in good faith and with reasonable skill and knowledge (PO, s 81(4)).
Punitive damages
The PO does not provide for punitive or additional damages.
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?
In cases of urgency and requiring an element of secrecy in the injunction application (eg where there is a large impending shipment of infringing products) and where there is a strong prima facie case of infringement, an application can be made to the court for an ex parte injunction for detention, custody, preservation, inspection and delivery up of infringing articles as well as documentation pertaining to the infringing acts. The application is made without notice or only very last-minute notice (‘ex parte on notice’) to the defendant.
In cases not requiring secrecy in the application process, an application for interlocutory injunction by an inter partes summons can be made by first giving notice to the defendant. In either case, according to the principles laid down by the House of Lords in the case of American Cyanamid v Ethicon [1975] 2 WLR 316, the court must be satisfied that there is a serious question to be tried and then consider the balance of convenience of the case (ie whether the plaintiff if successful at trial would be adequately compensated by damages if an interlocutory injunction is not granted and whether the defendant if successful at trial would be sufficiently compensated by the plaintiff’s undertaking as to damages). If the balance tilts in favour of granting an interlocutory injunction, an injunction is granted.
In cases where the action is started by an ex parte application, an inter partes hearing for continuation of the ex parte injunction will be held in any event soon afterwards.
In cases where there is a real likelihood of destruction of evidence, the principles under the UK Court of Appeal’s decision in Anton Piller KG v Manufacturing Process Ltd [1976] Ch 55, CA, may be invoked to make an ex parte application for a court order ordering the defendant to permit the plaintiff’s solicitors and representatives to enter into the defendant’s premises and search. To obtain such order there must be:
Also, if there is evidence to prove that the defendant is about to dissipate his assets so as to make himself judgment proof, the court may grant a Mareva injunction (Mareva Compania Naviera SA v International Bulkcarriers SA [1980] 1 All ER 213).
The plaintiff has to file evidence in the form of affidavits in support of its application for interim injunctions. There is normally at least:
8.2 Is ex parte relief available where a defendant is given no notice at all? If so, under what conditions?
See questions 6.1 and 8.1 above.
8.3 Is a plaintiff entitled to ask for an order that the defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?
See questions 6.1 and 8.1 above.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
If the defendant can satisfy the court that there is a serious question on the validity of the patent to the extent that there is no strong prima facie case of patent infringement, the defendant may be able to defeat the plaintiff’s application for preliminary injunction.
In the case of an application for preliminary injunction, the plaintiff makes an appointment for hearing its application at the court by filing a summons. Before the hearing, the plaintiff files:
(1) affidavits in support containing clear and concise statements of: -the facts giving rise to the claim against the defendant in the proceedings; -the facts giving rise to the claim for interlocutory relief; -the facts relied upon justifying the application (and the facts relied upon justifying
the application being made ex parte, where applicable); this should include details of any notice given to the defendant or reasons for giving none; -any answer either asserted by the defendant or which he is likely to assert, either to the claim in the action or to the claim for interlocutory relief; -any facts known to the applicant which might lead the court not to grant the relief
sought or not to grant it ex parte; -the plaintiff’s ability to satisfy an undertaking in damages to the defendant; -the precise relief sought.
(2) skeleton arguments (and case law references) setting out precisely and succinctly how it
is said that the case: -meets the requirements for the order sought; and -if applicable, gives rise to the specified exceptional circumstances justifying the
grant of an injunction.
8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
See question 8.1 above.
8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
The plaintiff owes a heavy burden to prove that there is a very strong prima facie case of infringement. The plaintiff should also convince the court that on the balance of convenience they will not be adequately compensated by damages at trial if an injunction is not granted.
The length of preliminary injunction proceedings depends on the circumstances of the case. If the plaintiff has obtained an ex parte injunction from the court, it will last until the return date, normally seven days from the date of the order. If the defendant indicates an intention to oppose the continuance of the injunction at the return date, the return date hearing may be adjourned with directions for the defendant to file affidavit evidence in opposition, for the plaintiff to file affidavit evidence in reply and for the fixing of a full hearing. It may be anything from 6–12 weeks later before the entitlement to an injunction is determined.
If the plaintiff satisfies the court that this is an appropriate case to continue the injunction, the injunction will continue until trial or further order. If the defendant successfully opposes the injunction, the injunction will cease to have effect and the plaintiff will have to proceed with the legal proceeding against the defendant in the ordinary way.
8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?
Yes.
9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
The defeated party in any main proceedings or preliminary injunction proceedings may appeal against the decision of the CFI to the Court of Appeal (‘CA’). Also, the defeated party in the CA may appeal the decision of the CA to the Court of Final Appeal (‘CFA’).
From CFI to CA
As a general principle, an appeal lies as of right to the CA from every judgment or order of the CFI in any civil matter. The appellant serves a notice of appeal on all parties to the proceedings in the court below who are directly affected by the appeal within 28 days from the date on which the judgment or order of the CFI was sealed. The notice of appeal specifies the grounds of the appeal and the precise form of the order which the appellant proposes to ask the CA to make.
The respondent (the non-appealing party) who having been served with a notice of appeal desires to:
On an appeal from the decision of the trial judge sitting alone, the presumption is that the decision appealed against is right. The burden of showing that the trial judge was wrong lies on the appellant, and if the court is not satisfied that the judge was wrong, the appeal will be dismissed.
The hearing of an appeal by the CA is by way of rehearing. This does not mean that the CA literally ‘rehears’ the case, and that the parties have to start afresh as they did in the court below, but rather the court will rehear the case on the documents, including the transcript of the shorthand note of the evidence or the judge’s notes. The CA considers the materials which were before the judge below, and the additional materials, if any, before the court itself.
From CA to CFA
CFA is the highest court in Hong Kong. Application for permission to appeal to the CFA must be filed within 28 days from the date of the judgment appealed from. An appeal lies to the CFA as of right from any final judgment of the CA in any civil cause or matter, where the matter in dispute on the appeal amounts to or is of the value of HK$1m or more.
Appeal lies at the direction of the CA or CFA from any other judgment of the CA in any civil cause or matter, whether final or interlocutory, if in the opinion of the CA or CFA, the question involved in the appeal is one which by reason of its great general or public importance, or otherwise, ought to be submitted to the CFA for decision.
In addition, the CFA adopts similar appeal procedures and principles as that of the CA.
Power of the CA and CFA
Both the CA and the CFA may confirm, reverse or vary the decision of the court from which the appeal lies or may remit the matter with its opinion thereon to that court as it thinks fit.
9.2 How long do appeal proceedings typically last?
Depending on the nature of the appeal, length of hearing and the availability of the court, an appeal can take 8–15 months.
10. LITIGATION COSTS
10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?
This is such an uncertain variable subject to the circumstances of the case, that no reliable guide can be given.
10.2 Are costs recoverable from the losing party?
Generally, the successful party may recover their legal costs and disbursements from the other party, which after taxation (assessment) by the court, is usually about 60–70% of the legal costs and all disbursements actually incurred by the successful party in the proceedings.
Depending on the nature of the case and the conduct of the parties proceeding with the case, the court may request the losing party to pay costs on a higher recovery basis whereby the successful party may recover 80–90% of the costs incurred. The court may refuse to make a costs order in favour of the winning party, or may penalise them, if they have abused the process of the court or in other ways contributed to the delay or increased costs of the proceedings.
11. FORTHCOMING LEGISLATION
11.1 What are the important developing and emerging trends in your country’s patent law?
There are no recent developments or trends in patent law in Hong Kong.
11.2 To the extent it relates to patent enforcement, please outline any major patent legislation in the pipeline.
There are no pending developments on patent enforcement in Hong Kong.
12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites.
Michael Pendleton, Peter Garland, Jared Margolis Intellectual Property Rights www.ipd.gov.hk/eng/home.htm (Intellectual Property Department of the Hong Kong Special Administrative Region)
