TIPS^®  Taiwan Intellectual Property Special

TAIWAN INTELLECTUAL PROPERTY SPECIAL

Claim Amendment during the Administrative Remedial Procedure

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It has been a long held view in Taiwan that patent claim amendment (normally narrowing the scope) is not acceptable in the administrative remedial procedure after the Taiwan Intellectual Property Office (TIPO) makes a final rejection. A recent judgement from Taipei High Administrative Court (THAC) overturned this view. (The legal effect of a THAC judgement is similar to that of the Court of Appeals for the Federal Circuit in the U.S.)

For the patent application at issue, the TIPO issued an Advanced Notice of Rejection, citing US 5,514,853 for lack of novelty. The applicant deleted relevant claims that disclosed in the cited reference. However, in the final rejection, the TIPO refused to grant an invention patent for lack of novelty again, citing another prior patent, US 5,514,691. The applicant initiated an administrative appeal to vacate the TIPO’s final rejection. The Committee of the Administrative Appeals, the Ministry of Economic Affairs (CAA, MOEA) sustained the TIPO’s decision, and the case went to the THAC. The issue here is whether the claim amendment made in the administrative remedial procedure after a final rejection from TIPO is acceptable. The THAC held that Article 68 of the Patent Law even allows claim amendment after publication and approval in case of over broad claim, mistake, or obscurity in the statements. It can be inferred that the Patent Law, on the ground of encouraging invention and creation to promote the industrial development, should allow patent amendment in the administrative remedial procedure after the patent is finally rejected, as long as the amendment does not change the substance of the patent application at issue.

Therefore, the final rejection (i.e. the second official action) is vacated and remand to the TIPO as a de novo case, which should take the claim amendment into consideration. Nevertheless, a decision from THAC is not a precedent that should be followed in subsequent cases. The final position in this regard of the Administrative Courts in Taiwan or the TIPO has not been reached and we will keep informing you subsequent development.