Patent infringement is a civil claim. Hence, the standard civil litigation procedure follows if there is no settlement between the parties, as there is also no obligation to settle. A patent holder may begin formal litigation proceedings without the consent of the defendant. The patents are enforced initially in the Court of First Instance. Alternatively, parties may consider going for arbitration.
However, before commencing patent infringement proceedings, it is advisable to send a cease and desist letter to the alleged infringer.
Begin the litigation process
The first step into civil litigation is serving a writ of summons. This should be served within 12 months of the alleged patent infringement. A writ is a document that sets out all the material facts and the claimant’s cause of action.
If the defendant is located outside of Hong Kong.
The claimant must obtain the court’s approval before serving a writ outside the jurisdiction.
After serving the writ of summons
Once the writ is served, the defendant has a chance to defend and reply to the writ of summons, and even serve a counterclaim. If the defendant fails to give notice to defend against the claim, the claimant can then apply for judgment in default (which means that the claimant’s claim will be successful as the defendant defaults on the claimant’s claim). If the defendant does reply, the litigation process will eventually progress to a hearing.
Case Settlement Conference
Before progressing to a formal hearing, parties may choose to go to a case settlement conference. This process is similar to mediation. However, the venue will be at the district court in Hong Kong. A judge will act as a mediator. Each party shall have the opportunity to present their claims and the opportunity to negotiate and reach for a settlement. If the parties cannot agree to settle, the judge will order a hearing to hear the claims formally.
Arbitration
It is permissible to arbitrate on intellectual property matters in Hong Kong, including patents. A panel of arbitrator(s) will be selected to settle the dispute and the decision will be final. Hong Kong is also a party to the New York Convention. Hence, an award that is seated in Hong Kong may be readily enforceable around the world. Unlike litigation, the right to appeal in arbitration is extremely limited.
Relevant Hong Kong Laws:
Under Section 80 of the Patents Ordinance, a patent holder may bring a civil claim against a person who has allegedly infringed their rights under sections 73-75 of the Patents Ordinance. In the case of arbitration, Section 103D(1) of Arbitration (Amendment) Ordinance 2017 makes it clear that intellectual property disputes can be arbitrated. Section S103G(1) and (2) of the Ordinance also makes it clear that an arbitration award relating to intellectual property disputes is capable of being recognised and enforced in Hong Kong.
Key Takeaways
1. Patent holders may raise an action against persons who have allegedly infringed their patent rights under civil proceedings in Hong Kong.
2. They may wish to consider applying for an injunction or an interim injunction to protect their business interests during an impending trial.
3. Attending a case settlement conference before going for a formal hearing may be an excellent opportunity to settle to save costs and time. Arbitration is also a good alternative to litigation because of the finality of awards.
Bibliography
- Patents Ordinance (Cap. 514)<https://www.elegislation.gov.hk/hk/cap514>
- The Judiciary of Hong Kong, “Guidance Note For Case Settlement Conference In Civil Cases In The District Court”,<https://www.judiciary.hk/doc/en/court_services_facilities/Guidance%20Note%20for%20CSC.pdf>