Legal Protection of Digital Property
PhD(Computer Science) LLM(Intellectual Property) Department of Computer Science
• monopolyrightinaninventiontoexploit it and stop others from exploiting it without consent
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• to”exploit”(incontextofpatent)includes manufacture, sell, use, import, assign and license
• differenceswithcopyright
– patent protects “inventions” (including ideas capable of industrial application), which must be new and not obvious
– patent requires formal application disclosing details of the invention and specifying the scope of monopoly rights claimed
– patent may stop others from using or making the invention even though the latter have arrived at the invention independently
NB. Patent is also territorial.
Patent Application
• applicationmustinclude
– “description” of the invention, and
– “claims” of monopoly rights
• descriptionmustdisclosetheinvention sufficiently clear and complete
• claimsmustbeclearandconciseand supported by the description
NB. When a patent application is published, it forms part of the “state of the art”. State of the art is important in deciding whether to grant patent to an invention (more later).
NB. If a patent is granted, its claims will define the scope of the patentee’s monopoly. A person will infringe the patent if what he does falls within the claims.
• 2categoriesofclaimsinanapplication
– product (or “substance”) claim eg. new device, new material
» prevents others from making, selling, importing, using or stocking the product
– process (or “method”, or “use”) claim eg. new way of making rubber, new use of a chemical
» prevents others from using the process; and
» prevents others from selling, importing, using or stocking any product obtained directly by the process
What is this claim?
• Ahand-heldwritinginstrument comprising:
(a) an elongated core-element that will leave a marking line if moved across paper or other similar surface, and
(b) an elongated holder surrounding and encasing the elongated core element, one portion of the holder being removable from an end so as to enable the core-element to be exposed for writing,
whereby the holder protects the core element from breakage and provides an enlarged means for holding the core-element conveniently.
Q: Product claim or process claim?
What about this?
• Amethodforjoiningtwopiecesof cloth together at their edges, comprising the steps of:
(a) providing the two pieces of cloth and positioning them together so that an edge portion of one piece overlaps an adjacent edge portion of the other piece, and
(b) passing a thread repeatedly through and along the length of the overlapping portions in sequentially opposite
directions and through sequentially spaced holes in the overlapping adjacent portions,
whereby the two pieces of cloth will be attached along said edge portions.
NB. The above examples are “independent claims”
– do not reference any other claims in the same category;
– set out all essential features of the invention.
NB. Another type of claim is dependent claim
– a claim which references at least 1 other claim in the same category (“parent claim(s)”);
– sets out additional limitation to the parent claim(s) ie. dependent claim = proper subset of its parent(s)
NB. A patent application generally consists of at most 1 independent claim in each category, each possibly followed by a number of dependent claims.
NB. Having ≥ 2 independent claims in same category may be allowed if they are closely “interrelated” ie. complement each other or work closely together eg.
– claims for a group of chemical compounds;
– claims for two or more processes for the manufacture of compound X;
– claims directed to the use of chemical compound Y for multiple purposes;
– claims for plug and socket;
– claims for transmitter and receiver
Example of claims
Claim 1: a chair having only two legs.
Claim 2: the chair of claim 1, further comprising at least one leg made of wood.
Claim 3: the chair of claim 2, wherein at least a portion of the chair is covered with a fabric.
Claim 4: the chair of claim 3, …. [further limitations].
Claim 5: a method of making a chair of only two legs comprising steps A and B.
Claim 6: the method of claim 5, further comprising the step of C.
Claim 7: the method of claim 6, further comprising the step D.
Q: Which are independent claims? Which are dependent claims?
NB. Independent claim offers the broadest scope of protection.
NB. Dependent claims provide fallback positions during patent application and litigation. Eg. if claim 1 is invalidated because too broad, may rely on claim 2 which then becomes the independent claim and is narrower in scope.
Q: Is algorithm a product? or process? What about computer program?
E1: X has devised a new and ingenious algorithm for recognising human face, and has written a program implementing it. The program is built into a device for face recognition. What claims can X make in its patent application?
Patent System in HK
• governedbythePatentsOrdinance(Cap 514) enacted on 29 May 1997 with effect from 27 June 1997
NB. Hereinafter, references to sections are references to the Patents Ordinance unless stated otherwise.
• twotypesofpatentinHK:
– short-term patent (8 years protection)
– standard patent (20 years protection)
NB. Short-term patent will not be covered in this course.
• twotypesofstandardpatent(witheffect from 19/12/2019)
– apply in HK (standard patent (O))
– apply to a “designated patent office” then register in HK (standard patent (R))
NB. O = Original grant; R = Re-registration.
Application Procedure for a Standard Patent (R) in HK
At the DPO
Patent application
Search & publication
Within 6 months from date of publication: s.15
Request to record DPO application
Substantive examination
Publication of request to record
Advertisement in Official Journal
Entry onto Register
Grant of patent
Within 6 months from grant in DPO: s.23
Request for registration & grant
Publication of patent (specification & details)
Advertisement in Official Journal
Issue of Certificate20
Formalities check
Formalities check Grant of patent
• “designatedpatentoffices”
– State Intellectual Property Office (SIPO) » under PRC Patent Law
– UK IP Office (UKIPO)
» under UK Patents Act 1977
– European Patent Office (EPO), in respect of patents designating the UK
» under European Patent Convention
• HKpatentofficeanddesignatedpatent offices all adopt “first to file” system:
if 2 applicants compete for the same patent, the first to file has the right to be granted patent cf. s.9E(3)
NB. US used to adopt “first to invent” system, but switched to first to file system in March 2013.
• patentapplicationsmaybewithdrawn any time before grant
NB. If application is already published before it is withdrawn, it will be part of the “state of the art”.
NB. May take 24 to 48 months from filing in PRC or UK to finally being granted a standard patent in HK!
NB. Any person can apply to revoke a patent after grant, but only on limited grounds: s.91.
NB. PRC Patent Law covers industrial designs (“design patents”). Same in US. (The legal battle on smart phone between Apple and Samsung was partly concerned with design patents).
NB. HK and UK do not protect industrial designs by patent but as “registered designs”: cf. Registered Designs Ordinance (Cap 522).
Term of Standard Patent: s.39
• patenttakeseffectfromdateof advertising the grant in official journal and expires exactly 20 years from
– [for standard patent (R)] filing date in the designated patent office (“deemed date of filing”);
– [for standard patent (O)] filing date at the Registrar of Patents in HK
NB. Patent must be maintained by payment of renewal fees (initial 3 yrs + annual renewal).
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