OLN
高李严律师行当选为2019年企业法务联盟推荐的年度企业 (知识产权，香港)。该奖项旨在表彰我们为內部法律顾问和香港法律服务购买者提供的优质法律服务。
关于企业法务联盟
企业法务联盟是一个旨在帮助法务和合规专业人员在企业内履行其道德、法律和业务职责道德的团体。企业法务联盟的成员为亚洲和中东地区的企业的法务以及提供合规和其他相关法律服务的机构。企业法务联盟于1998年成立，目前约有21,000名成员。该联盟每年举办16场企业法务大会，并主办亚洲法律顾问杂志和相关网站。
We are pleased to announce that OLN has recently been named an In-House Community: Firm of the Year 2019 – Hong Kong in the area of Intellectual Property. This award recognizes our quality legal services to in-house counsel and buyers of legal services in Hong Kong.
About the In-House Community
In-House Community is a community of In-House Counsel helping In-House Legal and Compliance Professionals meet their ethical, legal and business commitments and responsibilities within their organisations. The In-House Community is comprised of individual member in-house lawyers and those with a responsibility for legal and compliance issues in the Asia-mena region. The In-House Community was founded back in 1998 and now has some 21,000 in-house members, for whom it provides 16 annual In-House Congress events, as well as Asian-mena Counsel magazine and online resources.
2021年1月4日（香港）– 高李严律师行很高兴地宣布成立OLN IP以拓展其知识产权服务。
OLN IP由蔡柏坚律师（董事总经理）以及宋静妍律师（联合国知识产权领域的资深人士）领导，并得到了我们香港和上海办事处经验丰富的知识产权专家团队的支持，共同为客户提供适合其业务需求的细微而精确的知识产权建议。
高李严律师行将继续提供有争议的知识产权服务，通过行政和法院程序中的执法保护客户的知识产权资产。我们还为在香港联交所上市的公司提供法律意见。宋静妍律师表示：「 OLN IP创建自高李严律师行的悠久历史和声誉，以及我们长期合作的客户对我们的信任。我们对OLN IP作为独立的知识产权咨询和商业化咨询公司，添加到高李严律师行商业解决方案平台中，感到兴奋。」
考虑到当前客户在多个分区和复杂的商业环境中，公司必须要在知识产权的各个方面都拥有丰富的知识的专业人士提供建议，才可以保护这些知识产权蔡律师表示：「OLN IP完全可以为客户提供重要策略建议和实用的协助，以最大程度地提高其知识产权资产的价值。」
高中李严律师行的高级合伙人高国峻律师评论说：「我们很高兴蔡柏坚律师加入OLN IP。他拥有二十年的商业知识产权经验，并将与高李严律师行合伙人宋静妍律师一起领导新的企业。我们很荣幸能够率先将OLN IP作为创新的咨询公司来推动当今知识产权市场的变化。 OLN IP与OLN Online，是高李严律师行为香港商业社区所需的知识产权和法律提供解决方案的又一例证。」
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关于OLN IP董事总经理蔡柏坚律师
蔡柏坚律师在香港二十多年，为国际品牌和机构客户提供的商标管理方面以及有关中国大陆和海外的商标指控，都具有丰富的经验。
除了处理涉及商标和其他知识产权资产的商业交易外，他还参与参与涉及高价值的知识产权资产的并购项目的尽职调查活动。他还为一般的知识产权执法，假冒/不正当竞争，域名争议和蔡律师是香港商标从业者学会的前任主席，并积极参与该学会与知识产权局在知识产权法和政策审查与咨询方面的合作。知识产权营商论坛的指导委员会成员。蔡律师活跃于香港以外地区INTA（国际商标协会的亚洲委员会成员），APAA（亚洲专利代理人协会的香港设计委员会成员）以及商标（知识产权新兴问题委员会）成员）。有关蔡律师更多信息，请按此处。
联系方式
电子邮件：benjamin.choi@oln-ip.com / benjamin.choi@oln-law.com
电话：（852）2186 1871
关于OLN IP董事宋静妍律师
她重点执业在商标，专利，版权，域名争议，假冒行为，知识产权许可和知识她的经验涵盖了广泛的领域，从美国政府法律部门到企业客户和慈善机构。她于2002至2006年和2010年2015年担任INTA的立法和法规委员会。她还曾于2007至2009年在INTA担任地理标志委员会。宋律师还是亚洲专利代理人协会（APAA）和香港商标从业者协会（HKITMP）的活跃成员。宋律师也在2010年成为公证人。有关宋律师的更多信息，请按此处。
联系方式
电子邮件：vera.sung@oln-ip.com / vera.sung@oln-law.com
电话：（852）2186 1871
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关于高李严律师行
高李严律师行的一家独立的香港律师事务所，自1987年成立以来，其对专业水准的承诺一直是该事务所的基石。
• 公司和商业
• 争议解决
• 破产与重组
• 有争议的知识产权
• 保险
• 私人客户服务
• 离婚与家庭法
高李严律师行在目前拥有45名律师，他们被一个或多个司法管辖区认许，包括香港，法国，英国，美国，澳大利亚和加拿大。香港和上海设有办事处，并在必要时与我们在中国大陆的合作法律网络联系。
OLN IP Services Limited（OLN IP）地址：
香港湾仔海港道23号鹰君中心3楼28室
电话：（852）2186 1871
The Patent (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rule 2019 will come into effect on 19 December 2019. It marks the history of Hong Kong that she will have her originally granted patent registration for the first time.
Highlights of Reform of Patent system in Hong Kong
The existing patent system, namely, standard patent and short term patent, will be retained with some refinement of short term patent.
The new feature of the reform patent system is the introduction of the original grant patent system and some other issues relating to the existing patent system.
1. Standard patent by original grant (“Standard Patent (O)”)
It is an entire new patent system in Hong Kong. The applicant can file their standard patent (O) application directly in Hong Kong without first filing the patent application in designated patent office.
New features:
(1) Direct filing of the patent application with or without priority claim.
(2) Apart from checking minimum requirement on formality, the applicant will need to request for substantive examination within 3 years from the application date or priority date.
(3) The patent will be substantively examined as to its patentability, namely, novelty, inventive step and industrial applicability by examiner in Hong Kong.
(4) If the examiner considers that the patent lacks of novelty and/or inventive step, he will issue examination notice (and/or further examination notice), and the applicant has to deal with the official objection. The application will be granted if the applicant can overcome all the objection or it may be provisionally refused if the application does not fulfil the formal requirement.
(5) If the applicant cannot overcome the official objection after examination, provisional refusal will be issued, which is subject to review requested by the applicant.
(6) Applicant may request for review on provisional refusal notice, and the examiner will issue review opinion (or one or more further review opinion), and the applicant has to overcome the objection. If the objection can be overcome, patent will be granted. Otherwise, the examiner will issue final refusal notice, subject to appeal to High Court.
2. Standard patent by re-registration (“Standard Patent (R)”)
Standard Patent (R) application in Hong Kong is retained. The procedure is the same as the existing system, i.e. the application must be based on a designated patent application filed in China, U.K. or Europe designating U.K. It may simply regard this system as a re-registration system. The substantive examination of the Standard Patent (R) is conducted by the designated patent office.
The application process is divided into two stages, i.e. 1st Stage – Request to Record must be filed in Hong Kong within 6 months after the date of publication of the designated patent and 2nd Stage – Request for Registration and Grant must be filed in Hong Kong within 6 months after the publication of the request to record in HK; OR, the date of grant of the designated patent, whichever is later. No grace period is allowed for 1st Stage or 2nd Stage filing.
3. Short term patent (“STP”)
Under the current system, STP application can be filed directly in Hong Kong, subject to examination on the formalities and submission of a search report issued by competent patent registry, e.g. China National Intellectual Property Administration (“CNIPA”). Proprietor to establish the validity of the patent in enforcement proceedings before the court. The STP is retained with refinement as follows:
New features:
(1) The application can include 2 independent claims instead of 1 independent claim.
(2) Proprietor or interested party can request for post-grant substantive examination of the short term patent. If the proprietor wishes to commence enforcement action of an unexamined patent, it is a pre-requisite to have certificate of substantive examination.
(3) If the proprietor cannot overcome the objection raised in the examination notice issued against the short term patent, the examiner will issue provisional revocation notice of the patent, subject to appeal to High Court.
(4) When making a threat of infringement proceedings against a person, the proprietor should furnish with that person the basic patent information. Otherwise, the threat may be regarded as groundless and a party aggrieved by the threat may be entitled to seek relief.
Filing Tips under the New Patent System
| Missing priority deadline | – Possible restoration of priority right if a subsequent standard patent (O) or short-term patent application is filed within 2 months after the expiry of the 12-month priority period | ||||
| – Statement of priority and supporting documents may be filed with the Registrar within 16 months from the earliest priority date claimed | |||||
| Reference to an earlier specified application | – An alternative for filing something that appears to be a description of an invention (one of the minimum requirements for obtaining a filing date) | ||||
| – Applicant can file a 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 | |||||
| Missing parts of descriptions or drawings | – applicant can take its own initiative to file missing parts of description or drawing within 2 months from date of filing OR file the same within 2 months (extendable) from the date of notice | ||||
| – If filed within the prescribed period but later than the accorded date of filing, the accorded date of filing may be changed to the date on which the missing parts of the description or missing drawings were filed | |||||
| Voluntary amendment | – may be filed any time before publication; OR | ||||
| – at the time of filing request for substantive examination |
4. Other Remarks
i. Regulating certain title or descriptions of Patent Practitioners
Under Patents (Amendment) Ordinance 2016, use of certain titles or descriptions is prohibited:
(i) granted for approving that person to provide patent agency services in Hong Kong; and
(ii) recognized by law or endorsed by the Government.
ii. Revised official fee for patent filing
iii. New set of patent forms
iv. PCT patent
In its recent decision in Commissioner of Inland Revenue v Poon Cho Ming, John [2019] HKCFA 38, the Court of Final Appeal revisited the issue of tax implications on terminal or severance payments. It reaffirms the orthodox position in Fuchs v Commissioner of Inland Revenue (2011) 14 HKCFAR 74 that a payment made in return for acting or being an employee is taxable.
Background
Immediately prior to July 2008, the Claimant was employed as an executive director and the Group Chief Financial Officer with a company in Hong Kong. On 18 July 2008, he was informed of the company’s decision to terminate his employment but refused to go quietly. He threatened to bring the matter in front of shareholders and to take his claims to court, which would likely attract media attention and trigger market reaction.
To avoid acrimonious disputes, the company entered into a Separation Agreement with the Claimant, promising to pay, inter alia, a payment in lieu of any discretionary bonus (the “Sum”) and acceleration of the vesting of certain option shares of the company previously granted to him so that he could exercise those share options (“Share Option Gain”).
Judgment
The test laid down in the Court of Final Appeal’s landmark decision in Fuchs is that a payment has to be paid as a reward for past, present or future services in employment to be classified as income earned in the course of employment, which is chargeable to salaries tax. Everything else is outside the operation of the statute and non-taxable.
As a matter of substance, the Sum, which was in an arbitrary amount, was of a “wholly different nature” from any discretionary bonus under the employment agreement between the Claimant and his employer. It was decided that the Sum was not a payment to induce the Claimant to provide future services or to reward him for past services. Rather, it was paid with a view to eliminating any possible claim the Claimant might advance against the company. The Court applied the Fuchs test and found that the Sum is not chargeable to tax.
With reference to the Share Option Gain, it was paid under the Separation Agreement, which abrogated any rights that Mr Poon might have under his employment contract. It has been held that sums paid to employees as consideration to or compensation for the total abrogation of contract (Henley v Murray [1950] 31 TC 351 and Comptroller-General of Inland Revenue v Knight [1973] AC 428) are not given to reward past services, and hence non-taxable. In the same vein and consistent with Fuchs, the Share Option Gain was not taxable as it was not paid as a reward for past services.
Implications
This decision clarifies the tax treatment of sums paid in scenarios where an employer terminates the employment of staff and wishes to placate them with payments. Essentially, one must look at the reason for which the money is paid and consider whether it arises out of arrangements in the employment contract. The determination of the nature of such payment becomes a question of fact.
One of the arguments advanced by the Commissioner in the present case was that the “substitution test” from Mairs v Haughey [1994] 1 AC 303 should be applied so that the Sum, made in lieu of bonus, would be considered to take on the nature of a bonus which means the Sum would be regarded as recognition of the Claimant’s past employment services. However, looking at the substance of the Sum, the Court found that the Sum was paid to silence the Claimant and the amount was determined arbitrarily.
The reaffirmed principle in relation to terminal payments is helpful to both employers and employees when they have to negotiate for and structure the drafting of a separation agreement. It is also essential for the employers and employees to maintain documentary evidence relating to the terminal payments.
If you have any questions in relation to the above, please contact any member of Employment and Tax Teams or the writer at victor.ng@oln-law.com.
The formal relationship between the United States (the “US”) and Hong Kong is based upon the “one country, two systems” framework established in the Basic Law of Hong Kong. The United States-Hong Kong Policy Act of 1992 (the “HK Policy Act”) enacted by the US establishes the US government’s policy of treating Hong Kong as a non-sovereign entity distinct from China for purposes of US-Hong Kong trade and economic cooperation.
On 19th November 2019 following a similar move by the House of Representatives, the US Senate passed the Hong Kong Human Rights and Democracy Act of 2019 (the “HK Human Rights Bill”), which is intended to amend the HK Policy Act. Despite passage by both the House and Senate, however, the HK Human Rights Bill will not become law until the US President signs off on it.
This writer tries to explore key provisions of the HK Human Rights Bill and analyse its potential impact on Hong Kong should it be passed from the commercial point of view. This article should not form any advice on US laws and legislation.
Major provisions of the HK Human Rights Bill
Implications
Should the HK Human Rights Bill be enacted, it entails (and indeed, expands the scope of), among other things, an annual review of the degree of autonomy of Hong Kong, which was the justification for preferential trade and economic benefits as a result of the city’s special status granted under the HK Policy Act – It is indeed with this special status Hong Kong is shielded from tariffs on Chinese goods levied by the US.
Should the special status of Hong Kong be revoked, it would be unavoidable for Hong Kong to suffer a heavy economic blow from various tariffs and import and export restrictions. There is also the possibility of US sanctions imposed on Hong Kong, creating challenges to Hong Kong’s commercial services and potentially unseating it from its position as an international financial hub.
Other benefits afforded by the special status, such as the free currency exchange between Hong Kong and US Dollars, import of sensitive technologies from the US to Hong Kong, and circumvention by Hong Kong residents of visa restrictions that apply to their mainland Chinese counterparts, would likely be cancelled should the HK Human Rights Bill be enacted.
Not only would Hong Kong suffer, but the US-Hong Kong relationship could also be jeopardized. There are currently more than 1,300 US firms operating in Hong Kong. The US trade surplus with Hong Kong is the single largest with a US trading partner, and the US remains a major source of foreign direct investment in Hong Kong.
From a business perspective, if the HK Human Rights Bill becomes law, we can expect to see a chilling effect on US trade and investments in Hong Kong. While it is unclear how substantial the economic impact it would have on Hong Kong, it is almost certain that Hong Kong’s reputation as a trusted player in the global economy would be adversely affected.
If you are interested to discuss with or want to learn more about how your business may be impacted by different current legal developments, please feel free to contact us atvictor.ng@oln-law.com.
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