OLN
高李嚴律師行當選為2019年企業法務聯盟推薦的年度企業 (知識產權，香港)。該獎項旨在表彰我們為內部法律顧問和香港法律服務購買者提供的優質法律服務。
關於企業法務聯盟
企業法務聯盟是一個旨在幫助法務和合規專業人員在企業內履行其道德、法律和業務職責道德的團體。企業法務聯盟的成員為亞洲和中東地區的企業的法務以及提供合規和其他相關法律服務的機構。企業法務聯盟於1998年成立，目前約有21,000名成員。該聯盟每年舉辦16場企業法務大會，並主辦亞洲法律顧問雜誌和相關網站。
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）– 高李嚴律師行很高興地宣布成立OLN IP以拓展其知識產權服務。
OLN IP是一家諮詢公司，致力於為知識產權擁有者提供特定的商業主導的建議，從協助基於技術的IP，商標，版權，專利和外觀設計，到持續管理知識產權資產。 OLN IP由蔡柏堅律師（董事總經理）以及宋靜妍律師（均為知識產權領域的資深人士）領導，並得到了我們香港和上海辦事處經驗豐富的知識產權專家團隊的支持，共同為客戶提供適合其業務需求的細微而精確的知識產權建議。
高李嚴律師行將繼續提供有爭議的知識產權服務，通過行政和法院程序中的執法保護客戶的知識產權資產。我們還為在香港聯交所上市的公司提供法律意見。宋靜妍律師表示：「 OLN IP創建自高李嚴律師行的悠久歷史和聲譽，以及我們長期合作的客戶對我們的信任。我們對OLN IP作為獨立的知識產權諮詢和商業化諮詢公司，添加到高李嚴律師行商業解決方案平台中，感到興奮。」
「知識產權通常是公司最大價值的部分。考慮到當今客戶在多個管轄區和複雜的商業環境，公司須要在知識產權的各個方面都具有豐富知識的專業人士提供建議，才可以保護這些知識產權和創造價值」。蔡律師表示:「 OLN IP完全可以為客戶提供重要策略建議和實用的協助，以最大程度地提高其知識產權資產的價值。」
高李嚴律師行的高級合夥人高國峻律師評論說：「我們很高興蔡柏堅律師加入OLN IP。他擁有二十年的商業知識產權經驗，並將與高李嚴律師行合夥人宋靜妍律師一起領導新的企業。我們很榮幸能夠率先將OLN IP作為創新的諮詢公司來推動當今知識產權市場的變化。OLN IP與OLN Online，是高李嚴律師行為香港商業社區所需的知識產權和法律提供解決方案的又一例證。」
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關於OLN IP董事總經理蔡柏堅律師
蔡柏堅律師在香港二十多年來，為國際品牌和機構客戶提供的商標管理方面以及有關中國大陸和海外的商標起訴，都具有豐富的經驗。
除了處理涉及商標和其他知識產權資產的商業交易外，他還參與了大量涉及高價值知識產權資產的併購項目的盡職調查活動。他還為一般知識產權執法，假冒/不正當競爭，域名爭議和數據隱私問題提供諮詢。蔡律師是香港商標從業者學會的前任主席，並積極參與該學會與知識產權局在知識產權法和政策審查與諮詢方面的合作。他還是香港貿易發展局舉辦的年度亞洲知識產權營商論壇的指導委員會成員。蔡律師活躍於在香港以外地區INTA（國際商標協會的亞洲委員會成員），APAA（亞洲專利代理人協會的香港設計委員會成員）以及Marques（知識產權新興問題委員會成員）。有關蔡律師更多信息，請按此處。
聯繫方式
Email: benjamin.choi@oln-ip.com / benjamin.choi@oln-law.com
Tel: (852) 2186 1871
關於OLN IP董事宋靜妍律師
宋靜妍律師是高李嚴律師行的合夥人，並領導高李嚴律師行在香港和中國大陸的知識產權團隊。她重點執業在商標，專利，版權，域名爭議，假冒行為，知識產權許可和知識產權執法。 宋律師在跨國公司的知識產權註冊，起訴，執行，資產組合管理和開發方面都擁有豐富的經驗。她的經驗涵蓋了廣泛的領域，從美國政府法律部門到企業客戶和慈善機構。 宋律師在2012-2013年被任命國際商標會議（ INTA）的東亞和太平洋小組法律法規委員會主席。她於2002至2006年和2010年2015年擔任INTA的立法和法規委員會。她還曾於2007至2009年在INTA擔任地理標誌委員會。宋律師還是亞洲專利代理人協會（APAA）和香港商標從業者協會（HKITMP）的活躍成員。 宋律師也在2010年成為公證人。有關宋律師的更多信息，請按此處。
聯繫方式
Email: vera.sung@oln-ip.com / vera.sung@oln-law.com
Tel: (852) 2186 1871
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關於高李嚴律師行
高李嚴律師行是一家獨立領先的香港律師事務所，自1987年成立以來，其對專業水準的承諾一直是該事務所的基石。高李嚴律師行的執業領域包括：
• 公司和商業
• 爭議解決
• 破產與重組
• 有爭議的知識產權
• 保險
• 私人客戶服務
• 離婚與家庭法
高李嚴律師行目前擁有45名律師，他們被一個或多個司法管轄區認許，包括香港，法國，英國，美國，澳大利亞和加拿大。 高李嚴律師行在中國擁有蓬勃發展的業務，在香港和上海設有辦事處，並在必要時與我們在中國大陸的合作法律網絡聯繫。
OLN IP Services Limited（OLN IP）地址：
香港灣仔海港道23號鷹君中心 3樓28室
電話：（852）2186 1871
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媒體聯繫：
Liz Kenyon
市場與傳播顧問
高李嚴律師行
電話：+852 2868 0696
liz.kenyon@oln-law.com
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.
香港中環雪厰街二號聖佐治大廈五樓503室
+852 2868 0696
