Celltrion, Inc v Genentech, Inc

Court of First Instance
High Court Action No. 1873 of 2013
Deputy Judge Kent Yee in Chambers
13 July 2016

Patents – revocation proceedings – applications for amendment of patents – court’s approach to exercise of discretion – delay alone not fatal to applications

In October 2013, P commenced this action for the revocation, on the grounds of lack of novelty and an inventive step, of a patent (the “Patent”) which had been granted to D in March 2009. D took out two applications (the “Applications”), the first (by a summons taken out in July 2014) being an application to amend the claims of the Patent; and the second (by a summons taken out in August 2014) being an application to amend the specifications of the Patent. Jointly the parties sought, and obtained from a Master, a consent order providing that P shall forthwith discontinue its action with no order as to costs including those of the Applications and undertook not to oppose or otherwise contest the Applications. Accordingly, the Applications were uncontested before the Deputy Judge.

Held, granting leave to amend the claims of the Patent in the manner sought by the first summons and leave to amend the specifications of the Patent in the manner sought by the second summons, that:

  • There being no changes to the Patents Ordinance (Cap. 514) corresponding to the amendments to the United Kingdom’s patent legislation made in 2007, what Aldous J said in Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] FSR 561 at p.569 remained good law in Hong Kong. In deciding whether or not to exercise its discretion to allow applications to amend the claims of a patent and applications to amend the specifications of a patent, the court had to take into account the whole circumstances of the matter and could not just focus on the issue of delay and determine such applications on that basis.
  • Despite the lateness of the Applications, which should cause some concern, and despite the fact that D’s explanations for such lateness were not impressive, it was to be borne in mind: that no unfair advantage had been obtained by D through the use of the Patent; that there was no complaint of detriment arising from the delay; and that neither P nor the Registrar of Patents opposed the Applications.

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