RE MERCK SHARP & DOHME LTD.

RE MERCK SHARP & DOHME LTD.

The Court ordered that Hong Kong Patent No. 81 of 1997 be amended to substitute Claim 1 with the wording of the amended European (UK) patent and that Claims 2 to 6 and corresponding sections be deleted because the applicant complied with advertisement requirements and no opposition appeared; costs of the motion and amendment were ordered against the applicant.

Citation
RE MERCK SHARP & DOHME LTD.
Parties
Applicant/patentee: Merck Sharp & Dohme Limited; Respondent/registrar: Registrar of Patents
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
10 October 2001
Case Number
HCMP1626/2001
Procedural Posture
Application Under Patents Ordinance (cap. 514) S46 to Amend Registered Patent / Final Disposition/judgment
Outcome
Application granted: specification amended as requested; costs awarded against Applicant.
Legal Topics
Amendment of Patent Specification, Rectification of Register of Patents, Advertisement for Amendments, Costs
Source Language
EN
Patent Law Intellectual Property Administrative Law Amendment of Patent Specification Rectification of Register of Patents Advertisement for Amendments Costs

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Parties

Merck Sharp & Dohme Limited

Applicant/patentee

Registrar of Patents

Respondent/registrar

Procedural Posture

Application Under Patents Ordinance (cap. 514) S46 to Amend Registered Patent / Final Disposition/judgment

Legal Issues

  1. 1 Whether the Hong Kong patent specification should be amended to correspond with amendments to the corresponding European (UK) patent following opposition proceedings
  2. 2 Whether Claims 2 to 6 should be deleted from the Hong Kong patent
  3. 3 Whether the re-advertisement requirement was satisfied

Ratio Decidendi

The Court ordered that Hong Kong Patent No. 81 of 1997 be amended to substitute Claim 1 with the wording of the amended European (UK) patent and that Claims 2 to 6 and corresponding sections be deleted because the applicant complied with advertisement requirements and no opposition appeared; costs of the motion and amendment were ordered against the applicant.

Court Disposition

Application granted: specification amended as requested; costs awarded against Applicant.

Orders

  • Registrar of Patents to amend the specification of Patent No. 81 of 1997 by deleting Claim 1 and substituting a fresh Claim 1 as set out in the schedule following the amended European (UK) patent.
  • Registrar to delete Claims 2 to 6 inclusive and the sections headed 'Revendications' and 'Patentanspruche' from the specification.