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Patent is the exclusive right to exploit an invention and to stop others from doing so. Hong Kong's patent protection is governed by the Patent Ordinance (Chapter 514, Laws of Hong Kong). A claim of patent right can be made to a product or a process (e.g. method).
Under section 93(1) of the Patent Ordinance, an invention is patentable "if it is susceptible of industrial application, is new and involves an inventive step".
The requirement of novelty means that the invention must not "form part of the state of the art". By virtue of section 94(2), "the state of the art" shall be held to comprise "everything made available to the public (whether in Hong Kong or elsewhere) by means of a written or oral description, by use, or in any other way", before the date of filing of an application for a patent for invention.
Section 96(1) further provides that an invention shall only be considered as involving an inventive step if, having regard to the state of the art, "it is not obvious to a person skilled in the art".
Finally, section 97(1) provides that an invention shall be considered as susceptible of industrial application "if it can be made or used in any kind of industry, including agriculture".
Certain subject matters are excluded from patent protection by virtue of section 93(2) of the Patents Ordinance. The followings are not regarded as "inventions":
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a discovery, scientific theory or mathematical method;
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an aesthetic creation; scheme, rule or method for performing a mental act, playing a game or doing business or a programme for a computer;
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the presentation of information.
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To see whether the patented invention is infringed, one has to consider whether the essential elements of the invention have been infringed. This can be done by looking at the main functions of the invention.
There are two different types of infringing acts. The first one is "direct infringement". Under section 73 of the Patents Ordinance, "direct infringement" occurs in relation to any product for:
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making, putting on the market, using or importing the product; or
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stocking the product, whether for the purpose of putting it on the market or otherwise.
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Under that provision, "direct infringement" also occurs in relation to any process for:
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using the process; or
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offering the process for use in Hong Kong when the third party knows, or it is obvious to a reasonable person in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent; or
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putting on the market, using or importing or stocking the product that is obtained directly from the process, whether for the purpose of putting it on the market or otherwise.
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The second type of infringing acts it "indirect infringement".
Under section 74 of the Patents Ordinance, "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".
"Indirect infringement" is therefore an offer to supply a person with means to put an essential element of the invention in question into effect in contravention of the above provision.
Note, however, that there is no infringement if the "means" referred to above are "staple commercial products", unless the supply or offering is made for the purpose of inducing the other person to commit a direct infringement act.
By virtue of section 80 of the Patents Ordinance, civil proceedings may be brought in the Court by the proprietor of a patent in respect of any act of infringement which he alleges he is entitled to prevent and in those proceedings a claim may be made:
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for an injunction restraining the defendant from any apprehended act of such infringement;
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for an order requiring the defendant to deliver up or destroy any patented product in relation to which the patent is infringed or any article in which the product is inextricably comprised;
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for damages in respect of the infringement;
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for an account of the profits derived by the defendant from the infringement;
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for a declaration that the patent is valid and has been infringed by the defendant.
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Though in any such proceedings, damages will not be awarded 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.
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