(1) At any time after the expiration of three years from the date of grant of a standard patent any person may apply to the court on one or more of the grounds specified in subsection (2)-

(a) for a licence under the patent;

(b) where the applicant is the Government, for the grant of a licence under the patent to any person specified in the application.

(2) The grounds referred to in subsection (1) are-

(a) where the patented invention is capable of being commercially worked in Hong Kong, that it is not being so worked or is not being so worked to the fullest extent that is reasonably practicable;

(b) where the patented invention is a product, that a demand for the product in Hong Kong is not being met on reasonable terms;

(c) where the patented invention is capable of being commercially worked in Hong Kong by manufacture, that it is being prevented or hindered from being so worked-

(i) in the case of a product, by the importation of the product; or

(ii) in the case of a process, by the importation of a product obtained directly by means of the process or to which the process has been applied;

(d) that by reason of the refusal by the proprietor of the patent to grant a licence or licences on reasonable terms-

(i) the working or efficient working in Hong Kong of any other patented invention which involves an important technical advance of considerable economic significance in relation to the patent is prevented or hindered; or

(ii) the establishment or development of commercial or industrial activities in Hong Kong is unfairly prejudiced; or

(e) that by reason of conditions imposed by the proprietor of the patent on the grant of licences under the patent, or on the disposal or use of the patented product or on the use of the patented process, the manufacture, use or disposal of materials not protected by the patent or the establishment or development of commercial or industrial activities in Hong Kong, is unfairly prejudiced.

(3) The court may, if it is satisfied that any of those grounds are established, and subject to subsections (4) and (5), order the grant of a licence on such terms as it thinks fit-

(a) to the applicant, where the application is made under subsection (1)(a); or

(b) to the person specified in the application, where the application is made under subsection (1)(b).

(4) Where the application is made on the ground that the patented invention is not being commercially worked in Hong Kong or is not being so worked to the fullest extent that is reasonably practicable, and it appears to the court that the time which has elapsed since the grant of the patent was advertised in the Gazette has for any reason been insufficient to enable the invention to be so worked, the court may adjourn the hearing for such period as will in the opinion of the court give sufficient time for the invention to be so worked.

(5) No order shall be made under this section unless the court is satisfied that the applicant has made reasonable efforts to obtain authorization from the proprietor on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time.

(6) No order shall be made under this section in respect of a patent ("patent A") on the ground mentioned in subsection (2)(d)(i) unless the court is satisfied that the proprietor of the patent for the other invention ("patent B") is able and willing to grant to the proprietor of patent A and his licensees a licence under patent B on reasonable terms.

(7) An order granting a licence under this section shall provide-

(a) that the licence shall be non-exclusive; and

(b) that such licence shall be non-assignable except with that part of the enterprise or goodwill which enjoys the use of the patent under the licence, and in the case of a licence granted under subsection (6) the licence in respect of patent A shall only be assignable with the assignment of the licence on patent B, and shall specify the scope and duration of such licence.

(8) An application may be made under this section in respect of a patent notwithstanding that the applicant is already the holder of a licence under the patent; and no person shall be stopped from relying on any of the matters specified in subsection (2) because of any admission made by him, whether in such licence or otherwise or by reason of his having accepted such licence.

[cf 1977 c. 37 s. 48 U.K.]

65. Provisions about licences under section 64

(1) Where the court is satisfied, on an application made under section 64 in respect of a patent, that the manufacture, use or disposal of materials not protected by the patent is unfairly prejudiced by reason of conditions imposed by the proprietor of the patent on the grant of licences under the patent, or on the disposal or use of the patented product or the use of the patented process, the court may (subject to the provisions of that section) order the grant of licences under the patent to such customers of the applicant as it thinks fit as well as to the applicant.

(2) Where an application under section 64 is made in respect of a patent by a person who holds a licence under the patent, the court may-

(a) if it orders the grant of a licence to the applicant, order the existing licence to be cancelled; or

(b) instead of ordering the grant of a licence to the applicant, order the existing licence to be amended.

[cf 1977c. 37s. 49 U.K.]

66. Exercise of powers on applications under section 64

(1) The powers of the court on an application under section 64 in respect of a patent shall be exercised with a view to securing the following purposes-

(a) that inventions which can be worked on a commercial scale in Hong Kong and which should in the public interest be so worked shall be worked there without undue delay and to the fullest extent that is reasonably practicable;

(b) that the inventor or other person beneficially entitled to a patent shall receive reasonable remuneration having regard to the nature of the invention;

(c) that the interests of any person for the time being working or developing an invention in Hong Kong under the protection of a patent shall not be unfairly prejudiced.

(2) Subject to subsection (1), the court shall, in determining whether to make an order in pursuance of such an application, take account of the following matters-

(a) the nature of the invention, the time which has elapsed since the grant of the patent was advertised in the Gazette and the measures already taken by the proprietor of the patent or any licensee to make full use of the invention;

(b) the ability of any person to whom a licence would be granted by the court to work the invention to the public advantage;

(c) the risks to be undertaken by that person in providing capital and working the invention if the application for an order is granted,

but the court shall not be required to take account of any such matter occurring subsequent to the making of the application.

(3) Any person aggrieved by an order made under section 64 or 65 may apply to the court for an order for the variation or cancellation of the licence if the court in all the circumstances should think fit.

[cf. 1977 c. 37 $.50 U.K.]

PART IX
GOVERNMENT USE OF PATENTED INVENTIONS

68. Declaration of extreme urgency

The Governor in Council may, for the purposes of applying sections 69 to 71, by regulation declare a period of extreme urgency whenver he considers it to be necessary or expedient in the public interest for the maintenance of supplies and services essential to the life of the community or for securing sufficient supplies and services essential to the life of the community.

69. Government use of patents during a period of extreme urgency

(1) During a period of declared extreme urgency a public officer authorized in writing by the Governor or any person authorized in writing by such public officer may in relation to-

(a) a patented invention, without the consent of the proprietor of the patent; or

(b) an invention in respect of which an application for a patent has been filed, without the consent of the applicant, do any act in Hong Kong in relation to the invention as appears to the public officer or person authorized to be necessary or expedient in connection with the urgency giving rise to the declaration under section 68.

(2) Any act done in relation to an invention by virtue of this section is in the following provisions of this section referred to as use, or Government use, of the invention; and "use", in relation to an invention, in section 70 to 72 shall be construed accordingly.

(3) Government use may include any act which would, apart from this section, amount to an infringement of the patent concerned or, as the case may be, give rise to a right under section 88 to bring proceedings in respect of the application for a standard patent.

(4) Any Government use of the invention made at any time either-

(a) after the publication of an application for a standard patent or the grant of a short-term patent for the invention; or

(b) without prejudice to paragraph (a), in consequence of a relevant communication made otherwise than in confidence-

(i) after the deemed date of filing of the application for the standard patent for the invention or the date of filing of the application of the short-term patent for the invention, as the case may be; or

(ii) where priority was claimed, after the date of priority, shall be made on such terms as may be agreed, either before or after the use, by the Government and the proprietor of the patent or as may in default of agreement be determined by the court on a reference under section 72.

(5) Where an invention is used by virtue of this section at any time after publication of an application for a standard patent for the invention but before such a patent is granted, and the terms for its use agreed or determined as mentioned in subsection (4) include terms as to payment for the use, then (notwithstanding anything in those terms) any such payment shall be recoverable only-

(a) after such a patent is granted; and

(b) if (apart from this section) the use would, if the patent had been granted on the date of the publication of the application, have infringed not only the patent but also the claims (as interpreted by the description and any drawings referred to in the description or claims) in the form in which they were contained in the application as published.

(6) The authority of a public officer in respect of an invention may be given under this section either before or after the patent is granted, and may be given to any person whether or not he is authorized directly or indirectly by the proprietor of the patent to do anything in relation to the invention.

(7) Where any Government use of an invention is made by or with the authority of a public officer under this section, then the public officer shall notify the proprietor of the patent as soon as practicable, and furnish him with such information as to the extent of the use as he may from time to time require.

(8) A person acquiring anything disposed of in the exercise of powers conferred by this section, and any person claiming through him, may deal with it in the same manner as if the patent were held on behalf of the Government.

(9) Any reference in this section to a patented invention, in relation to any time, is a reference to an invention to which a patent has before that time been, or is subsequently, granted.

(10) In this section "relevant communication", in relation to an invention, means a communication of the invention directly or indirectly by the proprietor of the patent or any person from whom he derives title.

(11) Subsection (4) is without prejudice to any rule of law relating to the confidentiality of information.

[ cf 1977 c. 37 ss. 55 & 56 U.K.]

PART XII
REVOCATION OF PATENTS

Patentable Inventions

93. Patentable inventions