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Enforcement through the courts
What level of expertise can a patent owner expect from the courts?
There is no specialised patent court; the courts are assisted by the parties, which are assisted by skilled litigators with relevant expertise.
Are cases decided by one judge, a panel of judges or a jury?
A single judge decides cases.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
Patent cases are not put to juries.
What role can and do expert witnesses play in proceedings?
Expert witnesses can play the role of a person skilled in the art in order to help the court to understand what skills and knowledge a person skilled in the art at the priority date would have possessed and whether the invention would have been obvious to a person skilled in the art at the priority date.
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
The courts apply the doctrine of ‘purposive construction’ to interpret the scope of claims. The doctrine of equivalents is not applied.
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
Interlocutory injunctions are available where there is actual infringement or threat of infringement, subject to the established requirements for granting interlocutory injunctions.
How are issues around infringement and validity treated in your jurisdiction?
The courts rule on infringement and validity when handling patent litigation.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
Hong Kong adopts common law jurisprudence. Decisions from other jurisdictions involving similar issues – particularly from common law jurisdictions – will be considered if the parties submit them to the courts.
Damages and remedies
Can the successful party obtain costs from the losing party?
The successful party can usually obtain all reasonable legal costs from the losing party.
What are the typical remedies granted to a successful plaintiff?
Typical remedies in patent litigation include:
- injunctions restraining the defendant from infringement;
- delivery up or destruction of any patented products in relation to the infringed patent;
- account of profits derived by the defendant from infringement; and
- a declaration that the patent is valid and has been infringed by the defendant.
How are damages awards calculated? Are punitive damages available?
Damages are assessed on the basis of actual loss suffered by the plaintiff or profits made by the infringer. Punitive damages are not available.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
The courts commonly grant permanent injunctions on finding that infringement has occurred.
Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
Typically, it takes 12 to 18 months to obtain a first-instance decision in cases where the parties do not seek extraneous extensions or delays. An application for summary judgment is possible in order to expedite the process where the defendant has no arguable defence.
How much should a litigant plan to pay to take a case through to a first-instance decision?
In uncontested patent cases, the total cost of obtaining summary judgment or default judgment is between HK$150,000 and HK$350,000.
Where a case is not concluded by summary or default judgment, legal costs (from the close of the pleadings to the beginning of trial) are between HK$400,000 and HK$2 million, depending on the extent of discovery, the number of expert witnesses required and the number and complexity of issues remaining in dispute.
When a full trial is necessary, further costs are typically between HK$1.5 million and KS$2.5 million, or more if senior counsel is appointed.
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