AMENDMENTS AFTER GRANT JURISDICTION REPORT: TAIWAN
RELAXED GUIDELINES FOR
Crystal Chen and Candy Chen Tsai Lee & Chen
Patent amendments aſter grant were relaxed on May 1. Te Taiwan Intellectual Property Office (TIPO) held several public hearings in the last two months discussing revisions to the current examination guidelines for amendments aſter grant.
Te revision is in response to a series of court judgments rendered by the Intellectual Property Court (IP Court), which revoked TIPO’s decisions on not entering the patentees’ claim amendments aſter grant. According to Article 64 of the Patent Act, amendments to the contents of the specification and drawings aſter grant should be limited to narrowing the scope of claims, correction of the errors made in the specification, or explanation of obscure descriptions. However, experiences from patentees indicate that amendments aſter grant have rarely been allowed and the TIPO has been overly strict in terms of allowing amendments aſter grant. Tis strict practice has put patentees in an unfavourable position when defending patent validity during litigation or invalidation proceedings, as unsuccessfully narrowing a claim may render the entire claim invalid.
Te amended guidelines allow amendments aſter grant, but elaborate situations where TIPO may deem a broadening or alteration of the claimed scope include:
1. Substituting technical features set forth in the original claim for terms with broader definition
2. Reducing limitations in the original claim 3. Adding subject matter to the original claim set
4. Recapturing technical disclosure that has been deleted or renounced before grant
5. Replacing technical features set forth in the original claim by terms with opposite definition
6. Altering technical features set forth in the original claim to different meanings in substance 7. Altering the subject matter of a claim
8. Introducing technical features that are not specific technical features or elaborative technical features of the technical feature set forth in the original claim and
9.Te technical field or technical issue to be resolved by the claimed invention is different aſter amendment.
Te most significant relaxation is how TIPO should treat limitations that are not set forth in the original claims but are described in the original description. Under the previous guidelines, other than species of a generic limitation, no other limitations were allowed by TIPO even if clearly
www.worldipreview.com
“ ACCORDING TO ARTICLE 64 OF THE PATENT ACT, AMENDMENTS TO THE CONTENTS OF THE SPECIFICATION AND DRAWINGS AFTER GRANT SHOULD BE LIMITED TO NARROWING THE SCOPE OF CLAIMS, CORRECTION OF THE ERRORS MADE IN THE SPECIFICATION, OR EXPLANATION OF OBSCURE DESCRIPTIONS.”
described in the specification as elaborative limitations defining an element set forth in the original claims. According to the amended guidelines, however, if incorporation of such limitations into the claims does not alter the technical issue intended to be solved by the original claimed invention, such incorporation shall not be deemed alteration of the scope of protection.
For example, for an invention originally set forth to comprise elements ‘A, B, C, and D’ and intended to solve a technical issue ‘T,’ if it is described in the original description that ‘A’ is preferably ‘a,’ this is permitted to be incorporated into the claims under the previous guidelines, so as to reduce the claim scope to ‘a, B, C and D.’ On the contrary, if it is described in the original description that ‘A’ is constituted of ‘a1’ and ‘a2,’ then ‘a1’ and ‘a2’ will not be permitted to substitute element ‘A’ under the previous guidelines.
Following the same example however, under the proposed revisions, if ‘A’ is constituted of ‘a1’ and ‘a2,’ and the claim is amended to claim an invention comprising ‘a1, a2, B, C, and D,’ and the amended invention still serves to solve the technical issue ‘T,’ it will be allowed by the TIPO.
Following the revisions, it is worth noting that the claimed invention should still intend to solve the same technical issue aſter the amendments. Should amendments aſter grant alter or add technical issues to be solved, they are deemed alteration of patent scope in substance and the amendments will not be allowed. Te idea of maintaining “the same technical issue to be solved” has not been emphasised before in the current examination guidelines for amendments aſter grant.
Candy K.Y. Chen is a patent attorney and managing partner at Tsai Lee & Chen. She can be contacted at:
ckchen@tsailee.com.tw
Crystal J. Chen is an attorney at law and partner at Tsai Lee & Chen. She can be contacted at:
cjchen@tsailee.com.tw
World Intellectual Property Review May/June 2011 69
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