TIPS^®  Taiwan Intellectual Property Special

Claim Amendment during the Administrative Remedial Procedure

In December 2002, our TIPS reported a Taipei High Court’s decision to accept patent claim amendment during the administrative remedial procedure. However, the Supreme Administrative Court overturned this decision in Judgements 91 Pan No. 628 and 91 Pan No. 2421, reiterating that patent claim amendment is not acceptable during the administrative remedial procedure. In the meantime, 91 Pan No. 2422 allows the courts take into account a claim amendment made during the administrative remedial procedure under certain limited circumstances.

The earliest Supreme Administrative Court’s judgement allowing claim amendment in the administrative remedial procedure is 86 Pan 2215, issued in 1997. However, in Judgement 91 Pan No. 2421, the Supreme Administrative Court held that “86 Pan 2215 Judgement” has not been selected as a precedent, and most of the later decisions from Supreme Administrative Court do not adopt the opinion of the 86 Pan 2215 Judgement; therefore said Judgement has no binding effect. Judgement 91 Pan No. 2421 further pointed out that the Patent Law gives the Patent Authority the right to notify the applicant, ex officio or upon request, to correct or amend the specification or drawings “during examination.” The Patent Law also stipulates that the “correction” or

“amendment” referred to herein shall not change the substance of the application, and “after approval of the patent,” correction or amendment is allowed only under certain circumstances.

Therefore, the Patent Law only allows the patent claims be amended “during examination” or “after approval of the patent.” If the applicant refuses to make an amendment upon receiving an “Advance Notice of Rejection,” which requires that an amendment be made, but rather amends the patent claims in the administrative remedial procedure, he/she unduly extends the application process to the administrative remedial stage. Such behavior would not only increase the burden of the administrative appeal authority, but also render the “Advance Notice of Rejection” useless.

Although Judgement 91 Pan No. 2421 does not accept any amendment to patent claims made during the administrative remedial procedure, it can be inferred that if the applicant does not forgo the opportunity to amend the claims, amendments to patent claims made during the administrative remedial procedure are still potentially acceptable under certain circumstances. Judgement 91 Pan No. 2422 held that if the Patent Authority does not reject the application for any ambiguous statement in the process of examination, or the first and second decisions of opposition do not require that the applicant amend or correct the patent claims, but in the third opposition, a decision to revoke the patent right is made without requesting that the applicant make an amendment or a reason why the request was not made, then the applicant is offered no chance of amending or correcting the patent claims and the decision to revoke is reckless. It is possible to amend the claims at this stage.

In view of the aforementioned opinion, the Supreme Administrative Court does not completely deny the amendment of patent claims made in the Administrative Remedial Procedure, but the Court made it clear that if the applicant does not comply with the Patent Authority’s request to amend the patent claims, he/she forgoes the opportunity of amendment. On the other hand, where the Patent Authority neglects the applicant’s right to amend or correct the patent claims, the applicant may be allowed to do so in the administrative remedial procedure.