3. Who actually owns the patent rights for a product or process? What are the possible penalties for infringers (persons who have infringed the patent right of others)?
A patent normally belongs to the inventor, the person who arrived at the critical inventive concept leading to the invention. However, where an invention was made by an employee in the course of his normal or specifically assigned duties, and the circumstances were such that an invention might reasonably be expected to result from the carrying out of the duties, the invention will belong to the employer (section 57 of the Patents Ordinance).
A standard patent takes effect from the date on which its granting is advertised in the official journal specified by the Registrar of Patents, and expires at the end of 20 years from the date on which the corresponding patent application was filed with the designated patent office (section 39 of the Patents Ordinance). A short-term patent also takes effect from the date on which its granting is advertised in the official journal, but expires at the end of 8 years from the date on which the patent application was filed with the Registrar of Patents (section 126 of the Patents Ordinance).
For both the standard and short-term patents, the patent owner is entitled to prevent all others from committing the following acts in Hong Kong in respect of the invention (see section 73 and section 74 of the Patents Ordinance):
- (where the invention is a product) making, marketing, using or importing the product;
- (where the invention is a process) using the process.
Patent infringement is a civil wrong (i.e. the infringer would incur civil liability). In patent infringement proceedings, relief (in the form of various kinds of court order) available to the patent owner against the infringer under section 80 of the Patents Ordinance includes:
- damages (compensation);
- injunction (a court order forbidding the infringer to continue selling the product or using the process under the patent in question);
- surrender the infringing products; and
- surrender the profits derived by the infringer in respect of the infringing item.