Patent

Relaxed Guidelines For Amendments After Grant

Patent amendments after grant are expected to be relaxed. The Taiwan Intellectual Property Office (TIPO) has held several public hearings in the last two months discussing proposed revisions to the current examination guidelines for amendments after grant.

The proposed revisions are in response to a series of court judgments rendered by the Intellectual Property Court (IP Court), which revoked the TIPO’s decisions to not enter the patentees’ claim amendments after grant. According to Article 64 of the Patent Act, amendments to the contents of specifications and drawings after grant should be limited to the matters of narrowing the scope of claims, correction of any errors made in the specifications, or explanation of any obscure descriptions. However, experiences from patentees indicate that amendments after grant have rarely been allowed and the TIPO has been overly strict in terms of allowing them. The strict practice has put patentees in an unfavorable position when defending the patent validity during litigation or invalidation proceedings, as unsuccessfully narrowing a claim may render the entire claim invalid.  

The amended guidelines will be relaxed in respect of allowing amendments after grant but not in situations where the TIPO may deem a broadening of or alteration to the claimed scope, including:

(1)                        Substituting technical features set forth in the original claim for terms with broader definitions;

(2)                        Reducing limitations in the original claim;

(3)                        Adding subject matter to the original claim set;

(4)                        Recapturing technical disclosure that had been deleted or renounced before grant;

(5)                        Replacing technical features set forth in the original claim with terms of opposite definitions;

(6)                        Altering technical features set forth in the original claim to have different meanings in substance;

(7)                        Altering the subject matter of a claim;

(8)                        Introducing technical features not being a specific technical feature or elaborative technical feature of the technical feature set forth in the original claim; and

(9)                        The technical field or technical issue to be resolved by the claimed invention will be different after the amendment.

The most significant relaxation in the proposed revisions is how the TIPO should treat limitations that were not proposed in the original claims but described in the original description. Under the current guidelines, other than a species of a generic limitation, no other limitations shall be allowed by the TIPO, even if such limitations are clearly described in the specification as elaborative limitations that can define an element already set forth in the original claims, the examiners following the current guidelines still do not allow incorporation of such a limitation to the original claim. 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 an alteration of scope of protection. 

For example, for an invention originally defined 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, then this is permitted to be incorporated into the claims under the current 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 shall not be permitted to substitute element A under the current guidelines. 

Following the same example under the new 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, such amendment shall be allowed by the TIPO.

Among the revisions of examination guidelines, it is worth noting that, the claimed invention should still intend to solve the same technical issue after the amendments. Should amendments after 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. The idea of maintaining “the same technical issue to be solved” has not been emphasized before in the current examination guidelines for amendments after grant.