Information for Review of Art. 27.3(b) (Patentable Subject Matter) - View

Hong Kong, China

List of Questions

Illustrative List of Questions Prepared by the Secretariat.

Yes. See the answer to question 4 above.

[Answer 4: Yes. In relation to microorganisms and short-term patents, the PO contains detailed provisions relating to the deposit of such microorganisms. (See Section 128 of the PO and Section 73 of the Patents (General) Rules.)]

N.B. Please ensure that your responses to the questions above cover each category of subject matter specified in Article 27.3(b), namely micro-organisms, essentially biological processes for the production of plants or animals, microbiological processes, non-biological processes, plant varieties and other inventions concerning plants or animals.

Cap. 490 applies to all botanical genera and species of vascular plants as well as edible fungi and algae. Varieties of all types of plants (e.g. food crops, vegetables, ornamentals) are eligible for protection. Plant varieties must meet the following criteria: (a) Novelty Protection can only be considered for a variety that has not been sold in Hong Kong for more than 12 months and elsewhere in the world for six years, in the case of trees and vines, or for more than four years, in every other case. (b) Distinctness To be considered for protection, the Registrar must be satisfied that the variety is clearly distinguishable in one or more important characteristics from existing varieties whose existence is a matter of common knowledge at the time of application. Distinguishing characteristics must be capable of precise description. (c) Uniformity The Registrar must be satisfied that the variety is sufficiently uniform or homogeneous in its relevant characteristics, subject to any variation that may be expected having regard to any particular features of its sexual reproduction or vegetative propagation, before the variety can be considered for protection. (d) Stability The Registrar must be satisfied that the variety retains its relevant characteristics over a number of generations of reproduction or propagation or, where a particular cycle of reproduction or multiplication is specified by the application, at the end of each cycle.

Under Section 18(2)(b) of Cap. 490, one of the requirements for an application to be treated as being eligible for the making of a grant is that the Registrar is satisfied that the applicant is an owner of that variety. Section 2 of Cap. 490 defines an owner, in relation to any variety, as: "a person who bred or discovered and developed that variety; an agent of that person; a successor to that person".

The exceptions to the rights granted are set out in Section 26 of Cap. 490 and include: • Use for experimental or research purposes. • Use for the purposes of breeding a new variety. • Use of reproductive material for human consumption or other non-reproductive purposes. • Section 29 of Cap. 490 also enables a third party to obtain an order from the Registrar of Plant Varieties Rights in relation to the sale of reproductive material relating to a particular plant variety if such is not available for purchase at a reasonable price.

Plant variety rights are granted for a term of 25 years in the case of trees and vines, and 20 years in every other case.

Representative Questions for TRIPS 27.3(b) Review Submitted by the Delegations of Canada, the European Union (formerly European Communities), Japan and the United States

Yes. Section 93(6) of the Patents Ordinance ("PO") provides that a plant or animal variety shall not be patentable. See also the answer to question 2(c).

[Answer A.2(c): Section 93(5) of the PO provides that "an invention the publication or working of which would be contrary to public order ("ordre public") or morality shall not be a patentable invention". This exclusion has not yet been tested in the Hong Kong courts. No patent has so far been found contrary to public order or morality in Hong Kong, China ("HKC").]

No, but whether such inventions are patentable depends on whether they comply with Section 93(1) of the PO (see the answer to question 3(a)).

[Answer A.3(a): Yes. Such an invention must satisfy the provision of Section 93(1) of the PO (i.e. must be susceptible of industrial application, is new and involve an inventive step) and must not be in breach of Section 93(5). See the answer to question 2(c).]

Section 93(6) of the PO indicates that plant and animal varieties are not patentable.

Section 93(5) of the PO provides that "an invention the publication or working of which would be contrary to public order ("ordre public") or morality shall not be a patentable invention". This exclusion has not yet been tested in the Hong Kong courts. No patent has so far been found contrary to public order or morality in Hong Kong, China ("HKC").

Yes. Such an invention must satisfy the provision of Section 93(1) of the PO (i.e. must be susceptible of industrial application, is new and involve an inventive step) and must not be in breach of Section 93(5). See the answer to question 2(c).

[Answer A.2(c): Section 93(5) of the PO provides that "an invention the publication or working of which would be contrary to public order ("ordre public") or morality shall not be a patentable invention". This exclusion has not yet been tested in the Hong Kong courts. No patent has so far been found contrary to public order or morality in Hong Kong, China ("HKC").]

No. See the answer to question 1.

[Answer A.1: Yes. Section 93(6) of the Patents Ordinance ("PO") provides that a plant or animal variety shall not be patentable. See also the answer to question 2(c).]

There has been no case on this topic in HKC. Whether such an invention is patentable must depend on whether it complies with Section 93(1) of the PO. Commentators elsewhere have taken the view that plants and animals altered by genetic manipulation are not varieties within the meaning of the European Patent Convention, but rather are representatives of a large family characterized by some novel gene, such as one imparting resistance to a herbicide. (See paragraph 1.20 of the C.I.P.A. Guide to Patents Act (4th Edition).) In such a case, the prohibition against patentability as regards plant or animal varieties contained in Section 93(6) of the PO may not be applicable.

Yes. In relation to microorganisms and short-term patents, the PO contains detailed provisions relating to the deposit of such microorganisms. (See Section 128 of the PO and Section 73 of the Patents (General) Rules.)

No. Section 93(6) of the PO provides that an "essentially biological process for the production of plants or animals" shall not be patentable.

There has been no case in HKC on this topic. Section 93(1) of the PO provides that an invention is patentable if it is susceptible of industrial application, is new and involves an inventive step. Section 93(2) of the PO provides a list of what shall not be regarded as inventions. This list includes: a discovery, scientific theory or mathematical method. The fundamental point to note is that "a discovery" is not patentable. Products or compositions are not excluded from patentability under Hong Kong law on the grounds that they are nature-identical. The question is whether there is a discovery. It is probably the case that the finding of a new substance or microorganism occurring freely in nature is a discovery. However, if it is necessary to develop a process to extract the substance or microorganism, such a process, and the material obtained from this process, may well be patentable. Much depends on the facts of a particular case, and the state of the art.

Yes. HKC provides sui generis plant variety protection by way of the Plant Varieties Protection Ordinance (Cap. 490).

HKC is not a member of UPOV, and is therefore unable to say categorically that Cap. 490 conforms to the standards defined in one of the Acts of UPOV. However, HKC had in mind the 1991 UPOV Act when drafting Cap. 490.

See the answer to question 2. [Note by the Secretariat: the answer to question 2 corresponds with the answer to number B.8. of the Representative Questions for TRIPS 27.3(b) Review Submitted by the Delegations of Canada, the European Union (formerly European Communities), Japan and the United States (IP/C/W/126)]

[Answer B.8: HKC is not a member of UPOV, and is therefore unable to say categorically that Cap. 490 conforms to the standards defined in one of the Acts of UPOV. However, HKC had in mind the 1991 UPOV Act when drafting Cap. 490]

No. See Sections 26(b)(ii) and (iii) of Cap. 490.

Yes, if essentially derived from the protected initial variety. See Section 31(1) of Cap. 490. A variety is treated as an essentially derived variety of another variety if: (a) it is predominantly derived from that other variety; (b) it retains the relevant characteristics that result from the genotype or combination of genotypes of that other variety; (c) it is clearly distinguishable from that other variety; and (d) except for the differences which result from the act of derivation, it confirms to the initial variety in the expression of the relevant characteristics that result from the genotype or combination of genotypes of that other variety. (Section 31(3) of Cap. 490.)

Yes, prior authorization is required unless the particular types of plant within which the protected variety is classified have been prescribed for exemption under Section 26(c) of Cap. 490.

There is no particular right for remuneration. The rights of a grantee under Cap. 490 are a proprietary right. It is the responsibility of a grantee to bring legal action against any person infringing his/her rights through civil proceedings in the courts.

Yes. Section 18(4)(a) provides that a variety is new if there has been no sale of that variety in Hong Kong for more than 12 months before an application was made, or no sale outside Hong Kong in respect of trees or vines for a period of six years, or a period of four years in every other case.

Protection is only granted if criteria like distinctness, uniformity, and stability (which are based upon the characteristics of the plant varieties) can be fulfilled.