Our firm has made an application on 4 November 2020, on behalf of 803 Funds Limited to the High Court of Hong Kong for leave to apply for judicial review, in which the Director of Building, Buildings Department is asked to take enforcement action against the registered owner regarding the conversion of two parking spaces located at the Basement of No. 98, Repulse Bay Road, Hong Kong (HCAL 2215/2020), and 803 Funds seeks the Court’s indulgence to direct the Director of Building to do so. This case is led by our Senior Partner, Mr. Peter Sit assisted by our Partner, Mr. Alex Chan together with associates from our Litigation Department.
On 30 September 2020, our firm has made an application on behalf of 803 Funds Limited to the High Court of Hong Kong for leave to apply for judicial review, in which the Education Bureau is required to disclose the names of the teachers who have committed professional misconduct, the schools involved and the nature of the misconduct in such substantiated cases and/or cases of professional misconduct found by the Education Bureau. This case is led by our Senior Partner, Mr. Peter Sit assisted by our Partner, Mr. Alex Chan together with 2 other members from our Litigation Department.
Our firm is acting for the registered owner of Sun Hung Kai Centre in HCA 672/2020, and has successfully obtained from the High Court an injunction order (with an award of costs) against the Defendant to prevent him from continuing his nuisance and trespass acts at Sun Hung Kai Centre.
The case is led by partner Alex Chan and assisted by associate Sally Ngan, trainee solicitor Koey Wong, as well as other professional staff including our in-house translator Kei Leung.
We act for our client in the sale of her landed property in Braga Circuit, Kadoorie Hill, Kowloon, the transaction of which was recently captured in the news (relevant article attached). Our partner Mr. Peter Sit and our Senior Associate Mr. Trevor Lee are handling the transaction for our client.
https://www.hk01.com/article/531963?utm_source=01appshare&utm_medium=referral
We have provided support and assistance to a client, Queen’s Counsel and solicitors in the United Kingdom, British Virgin Islands (BVI) lawyers, as well as counsel in Hong Kong in respect of a final appeal before the Judicial Committee of the Privy Council on appeal from the BVI Court of Appeal under which our client has succeeded in overturning and setting aside the judgment and order of the BVI first instance commercial court in winding up a BVI company and appointment of liquidators. The case involves dispute between the shareholders (who have also litigated in numerous other cases around the world, including Hong Kong) concerning an enormous shipping business.
The appeal involves an in-depth examination and debate on the laws relating to just and equitable winding-up and the application of the principles and facts on various aspects including the definition and nature of deadlock, alleged quasi-partnership relationship, responsibility for the deadlock, relevance of post-commencement conduct, alternative remedies etc.
Our legal team for this case is led by our litigation partner Mr. Roy Leung (who has travelled to the BVI and London for the purpose of this case) and assisted by our litigation associates Mr. Sidney Ho, Ms. Jenny Wong, Mr. Mathew Liu and Ms. Theresa Law, and has achieved synergy with legal teams in Hong Kong, the BVI and the United Kingdom for maximizing the interest of our client.
While we practise Hong Kong law solely, our litigation department has established close professional network with lawyers and counsel in the United Kingdom and other offshore jurisdictions (including BVI, Cayman Islands, Bermuda, etc.) and abundant experience in providing full-range supports to client in shareholders’ disputes, board room disputes, winding-up proceedings, liquidation process and other disputes involving companies incorporated in those offshore jurisdictions.
Our firm has been appointed to provide legal services to facilitate the dissolution of two clusters of Civil Servants’ Co-operative Building Societies for the purpose of re-development under pilot schemes, with announced project areas of 5,160 and 16,470 square metres respectively. As the attached Press Release suggests, the two sites consist solely of CBS buildings having a relatively large site area suitable for holistic restructuring and re-planning to generate more useable floor areas and to bring about enhanced benefits to the community. We are happy to be selected as a part of the process handling legal work
Press Release of the pilot schemes
https://www.ura.org.hk/en/media/press-release/20200522
Our team is led by our partner Mr Tommy Tam, assisted by our senior associate Mr Trevor Lee and associate Miss Winnie Cheng.
Despite the ongoing general adjournment of court proceedings announced by the Hong Kong Judiciary as a result of the outbreak of coronavirus pandemic, our Litigation Department has successfully assisted a client, being a company registered in Hong Kong (the “Company”), in obtaining an Order of the High Court of Hong Kong for appointment of provisional liquidators of the Company.
The Company is a pivotal part of an international group engaged in garment and fashion trading. Faced with financial difficulties including a total indebtedness of about HKD 300 million, coupled with the collapse of the retail arm in Europe and the mandatory closure of over 200 retail stores due to the coronavirus outbreak, the Company had to petition for its winding-up and resort to the appointment of provisional liquidators, primarily with a view to preserving its assets at stake, including inventories in the total value of approximately EUR 70 million.
Our team, led by litigation partner Mr. Roy Leung, assisted by assistant solicitors Mr. Mathew Liu and Ms. Theresa Law, and trainee solicitor Ms. Winnie Hui, received instructions from the Company to proceed with the petition and the application on urgent basis. Our team has swiftly collaborated with local Counsel and German lawyer, and liaised with one of the Big Four accountancy firms in preparation for the urgent application in less than a week’s time. Despite the Judiciary’s present limited operation, the Court was convinced to hear the Company’s application on an urgent basis, where special leave to issue a winding-up petition of the Company and the Order of appointment of provisional liquidators were successfully obtained.
Our Litigation Department has abundant experience in assisting individual and corporate clients in need of advice in restructuring and insolvency, especially at times of economic turmoil. In particular, we have established close links with prominent accountancy and advisory firms and leading insolvency experts in order to provide timely and professional support for our clients.
Hong Kong’s Patents (Amendment) Ordinance 2016 ( “the Ordinance” or “PAO” ) came into force on 19th December 2019 to further improve the Hong Kong’s system of protecting intellectual property rights on inventions
To ensure that Hong Kong’s system continues to meet present-day circumstances and be in alignment with Government’s vision of developing Hong Kong into a regional innovation and technology hub, Hong Kong Government appointed an Advisory Committee on Review of the Patent System in Hong Kong in 2011 (the “Advisory Committee”) to review and advise it on (a) how the Administration should position Hong Kong’s patent system and (b) how best to implement suggested changes to the system. Apart from the macro issues, the review also involved different professional and technical considerations underpinning the patent system as well as specific issues on (a) whether and, if so, how Hong Kong should have its own “original grant” patent system (as opposed to the pre-existing “re-registration” system), (b) refinements to the short-term patent system and (c) regulation of patent agency services. C. K. Kwong, the writer of this article, was a member of this Advisory Committee.
The Advisory Committee made recommendations in its December 2012 Report comprising 202 pages https://www.ipd.gov.hk/eng/intellectual_property/patents/review_report.pdf (the “Advisory Report”) which were accepted by the Hong Kong Government in 2013. These recommendations include:-
(a) Introduction of an Original Patent Grant (“OPG”) system with substantive examination while retaining the pre-existing re-registration system for grants of standard patents;
(b) Refinement of the short-term patent protection system;
(c) Development of a regulatory regime on patent agency services.
The Ordinance https://www.gld.gov.hk/egazette/pdf/20162023/es12016202317.pdf and the Patents (General) (Amendment) Rules 2019 (the “Amendment Rules”) https://www.ipd.gov.hk/eng/intellectual_property/patents/patent_amendment_rules2019.htm were both eventually brought into force on 19th December 2019.
Within the first 8 minutes of launching the new OPG system at 9:00 am on 19th December 2019, the IP Team of Sit, Fung, Kwong & Shum filed Hong Kong’s first and second short-term and standard patent applications respectively under the new OPG system.
The main changes brought about by the new system are as follows:-
1. The alternative of direct filing of standard patent applications in Hong Kong without any prior application at any Designated Patent Office outside Hong Kong i.e. the China National Intellectual Property Administration (“CNIPA”), the European Patent Office (for patents designating the UK) and the United Kingdom Patent Office are now available under the OPG system. The Hong Kong Patents Registry will conduct both formality and substantive examinations;
2. Requirement of substantive examination of a short-term patent after grant (as opposed to the previous system of having no substantive examination before or after grant) as a pre-requisite for commencement of enforcement action and making it a groundless threat for infringement proceedings being threatened without furnishing basic patent information to the person being threatened. The maximum number of independent claims per short-term application is increased to two;
3. Interim measure prohibiting the use of certain professional titles (as opposed to restriction on the practice of patent agency) is introduced as an interim step to pave way for a long term full regulatory regime.
Further details of the new system are provided below:-
1. Direct application of standard patent: Under the pre-existing system, only two ways of obtaining patent protection were available. First, a standard patent (with maximum protection of 20 years) by re-registration of a patent filed with one of the “Designated Patent Offices”, namely the China National Intellectual Property Administration (“CNIPA”), the European Patent Office (for patents designating the United Kingdom) and the United Kingdom Patent Office. The second way is to file an application directly with the Hong Kong Patents Registry. A Short-term Patent (with a maximum term of 8 years) is subject to formality examination only.
Under the new OPG system, a patent proprietor has the option of making a direct application for a standard patent with the Hong Kong Patents Registry for same maximum term of 20 years. An OPG application is subject to both formality and substantive examinations. Examinations of an OPG application are conducted by the Hong Kong Patents Registry.
2. Refinement of short-term patent system: A short-term patent application under the old regime was not subject to any substantive examination. The new patent system introduces post-grant substantive examination, which can be requested by either the short-term patent proprietor or any other party having a legitimate interest [s. 127B of PAO]. Parties who have legitimate interest in such request includes (a) those who have legitimate business interest with the patent proprietor (i.e. competitor with the patent proprietor or parties within the same area of the patent concerned) and (b) anyone with reasonable ground to suspect that the patent in question is not patentable (the person may not have legitimate business interest with proprietor) [s.127B of PAO]. This requirement safeguards the procedure from being abused [para 4.22 of Report of the Advisory Committee].
Further, a request for substantive examination is now a prerequisite to bring enforcement action for an unexamined short-term patent. Such prerequisite deters abuse, reduces litigation and discourages registration of non-patentable inventions [para 4.10 of Report of the Advisory Committee]. On the other hand, the new patent system gives patentees the benefit of increasing the maximum number of independent claims from one to two.
3. Relaxation on Making Priority Claim: Under the old patent system, once the priority deadline was passed, a patent proprietor would not be able to claim convention priority. However, the new patent system allows restoration of priority claim if the standard patent or short-term patent application is filed within 2 months after the expiry of the 12-month priority period and the patent proprietor can satisfy the Registrar that all reasonable care required by the circumstances has been taken [s. 37D(1)(5) of PAO].
Moreover, the new patent system extends the timeline for submission of statement of priority and supporting documents, which can now be filed within 16 months from the earliest priority date claimed [(s. 31C(4)(5) of the Amendment Rules].
4. Reference to earlier specified application: The new patent system has also introduced an alternative way to fulfil the minimum requirement of filing a description of invention. A patent proprietor can now make reference to an earlier specified application together with a statement indicating that a description and the drawings (if any) of the invention are completely contained in the specified application. This reference to earlier specified application is useful in fulfilling the said minimum requirement and securing a filing date first if the patent proprietor cannot provide full translations of the specifications at the time of application.
Further, a patent proprietor can claim priority and make reference to an earlier specified application at the same time [s. 37M (3)(c)(ii)of PAO].
5. Revised Renewal fees for standard patents: The flat scale under the old regime was abandoned. The new system now adopts a progressive scale for renewing a standard patent: - they are now HK$450 per year for the 3rd to 9th year, HK$620 per year for the 10th to 14th year, and HK$850 per year for the 15th to 19th year.
Conclusion
The new patent system demonstrates Hong Kong Government’s commitment to IP protection by bringing it on par with those of advanced economies and at the same time allow Hong Kong to determine its own patentability criteria, standards and procedures in a way that would best meet the needs of Hong Kong and its stakeholders. Practical measures were made to strike a balance between the legitimate interest of patentees and the general public. In the long run, it also helps nurture and attracts talents, stimulates the growth of patent agency business and widens career paths for our science and engineering graduates.
C. K. Kwong, JP (Justice of the Peace)
International Past President of APAA (Asian Patents Attorneys Association)
Chartered Arbitrator CIArb (London) /CEDR Accredited Mediator
Senior Partner of Sit, Fung, Kwong & Shum, Hong Kong
We have provided support and assistance to a client, British Virgin Islands (BVI) lawyers and Queen’s Counsel in the United Kingdom in respect of a successful appeal before the BVI Court of Appeal in overturning and setting aside the judgment and order of the BVI first instance commercial court in winding up a BVI company and appointment of liquidator. The case involves dispute between the shareholders (who have also litigated on numerous other cases around the world, including Hong Kong) concerning an enormous shipping business.
A special feature of the outcome of this appeal is that not only the BVI Court of Appeal saw fit to interfere and set aside the trial judge’s exercise of discretion, it has also been persuaded to overturn essentially all the major factual findings by the trial judge.
Our legal team for this case is led by our litigation partner Mr. Roy Leung (who has travelled to the BVI and London for the purpose of this case) and assisted by our associates Mr. Sidney Ho, Ms. Jenny Wong, Mr. Mathew Liu and Ms. Theresa Law, and has achieved synergy with legal teams in Hong Kong, the BVI and the United Kingdom for maximizing the interest of our client.
While we practise Hong Kong law solely, our litigation department has established close professional network with lawyers and counsel in other offshore jurisdictions (including BVI, Cayman Islands, Bermuda, etc.) and abundant experience in providing full-range supports to client in shareholders’ disputes, board room disputes, winding-up proceedings, liquidation process and other disputes involving companies incorporated in those jurisdictions.
On 22 January 2020, our Senior Partners, Peter Sit and C. K. Kwong presented Long Services Awards to the following members of the firm:
1. Joseph Wong – Partner (25 years)
2. Judy Lee – Intellectual Properties Manager (35 years)
3. Cathine Leung – Senior Secretary (35 years)
4. Stanley Lui – Conveyancing Assistant (35 years)
5. Annie Cheung – Secretary (30 years)
6. Maggie Leung – Secretary (25 years)
7. Carrie Law – Secretary (10 years)
8. Eva Ho – Secretary (10 years)
9. Connie Lee – Secretary (10 years)
Our litigation team has acted for the Joint and Several Liquidators (the “JLs”) of CEFC Shanghai International Group Limited (上海华信国际集团有限公司) (“CEFC Huaxin”), which went into insolvent liquidation with JLs appointed (the “Mainland Liquidation”) pursuant to the rulings by the Shanghai No.3 Intermediate People’s Court under the Enterprise Bankruptcy Law of the People’s Republic of China (the “PRC”). For the purpose of safeguarding CEFC Huaxin’s assets in Hong Kong, including a HK$7.2 billion receivable claim that CEFC Huaxin has against its Hong Kong subsidiary which had been subject to a pending creditor’s enforcement action in Hong Kong following a default judgment of €29 million, we made an urgent application (the “Application”) to the High Court of Hong Kong for a recognition order seeking recognition of the Mainland Liquidation and assistance to the JLs in Hong Kong, including among others, a stay on proceedings against CEFC Huaxin and its assets in Hong Kong.
The success of the Application is first of its kind in Hong Kong’s judicial history. Although the Hong Kong court routinely recognises and assists officeholders appointed in insolvency proceedings in some common law and civil law jurisdictions, including the Cayman Islands, the BVIs, Japan, etc., this is the first time for the Hong Kong court to recognise liquidation proceedings in Mainland China and grant assistance to the liquidators appointed by the PRC court.
The Honourable Mr. Justice Harris pointed out in his written judgment that “[given]the size of the Mainland economy and the financial problems increasingly experienced by Mainland businesses, which increasingly have assets located overseas, this is an application of considerable importance and it is necessary to consider in some detail the relevant principles, which this Court has developed in recent years and how they apply to a company incorporated in the Mainland, which as will be appreciated operates in many respects a significantly different economic and legal model to that in Hong Kong.”.
The written judgment for this unprecedented case has been handed down, for details please refer to https://legalref.judiciary.hk/lrs/common/ju/ju_frame.jsp?DIS=126607&currpage=T .
The case is handled by partner Roy Leung and assisted by associate Sally Ngan, as well as other professional staff including in-house translator Kei Leung.
Lawyers in our Litigation Department are experienced in a wide spectrum of winding-up proceedings and insolvency practices that involve complicated matters and cross-border issues, and are dedicated to providing cost-effective solutions to stakeholders in insolvency cases.
SFKS acts for the YGM Group in their successful acquisition of trademarks and related intellectual property assets worldwide which are associated with the famous “Ashworth” brand from Taylor Made Golf Company.
The Team is led by Senior Partner, C. K. Kwong and assisted by associates, Calvinne Luis, Wai Yin Chung, Timothy Wu and Louise Lam as well as trainee Corinna Kwok.
