A recent Supreme Administrative Court judgment, (No 391, 2011), points out that the Taiwan Intellectual Property Office (TIPO) improperly rejected the amendment to the claims of a post-granted patent application.
Amending a Post-granted Patent
According to paragraph one, Article 64 of the Taiwan Patent Act (TPA), a patentee may file an application for making amendments to the contents of the specification and drawings only in respect of narrowing the scope of the claims, correcting of errors made in the specification, or explaining obscure descriptions. Paragraph two, Article 64 of the TPA regulates that any amendment to a prepost-granted patent application shall not exceed the scope of contents which were disclosed in the original specification or drawings while filing the patent application, and shall not substantially expand or alter the scope of the patent claims. The effect of the amendments to the specification or drawings shall, upon publication, be retroactive to the filing date of the patent application concerned, which is regulated in paragraph four, Article 64 of the TPA.
With regard to what is called substantially altering the scope of the patent claims, the Substantive Examination Guidelines for invention patents stipulate that when the amendment results in changing the substantial meanings of the original patent claims, changing subject matter of the patent claims, changing the technical field to which the patent relates, changing the technical problem that the patent aims to settle, changing dependences of a dependent claim if this change results in altering either linkage relationships between features or sequence of steps in the original dependent claim for example, it will be regarded as “substantially altering the scope of the patent claims”.
Even though the Substantive Examination Guidelines regulate “what is called substantially altering the scope of the patent claims”, contentions on approval of amendments to claims of postpre-granted patent applicationspatents between the TIPO and the patentees still emerge.
Judgment No 391 (2011)
The appellee in this case, who was represented by Tai E in front of the IP Court and the Supreme Administrative Court, holds Taiwan Patent No I254111 (‘111 patent). A third party filed an invalidation action against the ‘111 patent with the TIPO. The appellee subsequently filed an application for amendments to the claims of the ‘111 patent. The TIPO rejected the application because it believed that the amendment to the claims violated paragraph two, Article 64 of the TPA. The appellee refused to accept the TIPO’s rejection and appealed to the Board of Administrative Appeal. The Board upheld the TIPO’s rejection so the appellee sued the TIPO at the IP Court. The IP Court ruled that the TIPO’s rejection and the Board’s decision should be withdrawn and the TIPO should grant the application for making amendments to the claims of the ‘111 patent made by the appellee. Not convinced by and not satisfied with the IP Court judgment, the TIPO appealed to the Supreme Administrative Court.
The Appellee’s Amendments
This table briefly lists the original claims and the appellee’s amendments to the claims of the ‘111 patent.
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Claim
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Original
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Amended
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Claim
|
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1
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A lighting structure of an input device comprises A, B and C.
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A lighting structure of an input device comprises A, B and C, and A comprises an a1, an a2 and an a3.
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1
|
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2
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depending on Claim 1
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deleted
|
|
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3
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depending on Claim 1 or 2
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deleted
|
|
|
4
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depending on Claim 1 or 2
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deleted
|
|
|
5
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depending on Claim 1
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deleted
|
|
|
6
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The lighting structure as claimed in claim 1, wherein the A comprises an a1, an a2 and an a3, and the B is formed on the a2.
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The lighting structure as claimed in claim 1, wherein
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2
|
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7
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depending on Claim 6
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retained
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3
|
|
8
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depending on Claim 6
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retained
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4
|
|
9
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depending on Claim 1
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deleted
|
|
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10
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depending on Claim 1
|
deleted
|
|
The Appellee’s Opinion
TIPO’s Opinion
The appellant, TIPO, agreed that the amendment to the claims made by the appellee narrowed the scope of the claims. However, the appellant found that the amendment to the claims substantially altered the scope of the original claims because amended Claim 1, which incorporates part of limitations in original Claim 6 to features existing in original Claim 1, did not exist independently in any of the original claims. Accordingly, the TIPO believed that the amendment to the claims of the ‘111 patent made by the appellee violates paragraph two, Article 64 of the TPA.
The IP Court’s Judgment
The IP Court approved the appellant’s opinion holding that the amendment to the claims narrowed the scope of the claims, but rejected the appellant’s opinion that the amendment to the claims of the ‘111 patent made by the appellee substantially altered the scope of the original claims. The IP Court found that the amendment to Claim 1 added limitation to features already existing in original Claim 1 from original Claim 6. The IP Court also found that the amendment to the claims made by the appellee did not change the linkage relationships between the element “A” and the other elements claimed in original Claim 1. Thus, the IP Court believed that appellant erred on determining that the amendment to the claims made by the appellee substantially altered the scope of the original claims. The IP Court also ruled that the appellant should grant the appellee’s application for making amendments to the claims of the ‘111 patent. The appellant refused to accept the judgment and appealed to the Supreme Administrative Court.
The Supreme Administrative
Court’s Judgment
The Supreme Administrative Court upheld the IP Court’s judgment and concluded that the amendment to Claim 1 added limitations to the existing element “A” without exceeding the scope of original Claim 1. With regard to amended Claim 2, amended Claim 2 retains the feature “the B is formed on the a2” as claimed in original Claim 6 so the linkage relationships between the elements in original Claim 6 remain unchanged, and so do amended Claims 3 and 4. Thus, the contention between the patentee and the TIPO on approving amendments to claims of a prepost-granted patent application in this case has become irrevocably resolved.
Based on the Supreme Administrative Court Judgment No 391 (2011), if the amendment to a target claim adds limitation to features that already existed in original target claim, the amendment to the target claim shall not be deemed as substantially altering the scope of the original claim and thus is still in compliance with paragraph two, Article 64 of the TPA.
New Practice
The draft amendment includes that adding limitations to a feature existing in the original claim, such as adding “A comprises a1+a2” to limit the existing element “A”, will not be determined as “substantially altering the scope of the original claim” if the technical problem that the patent aims to settle remains unchanged.
Based on the draft amendment to the Substantive Examination Guidelines, the application for amendments to the claims of the ‘111 patent made by the appellee should be granted.
An International Perspective
Most patent systems around the world allow applicants to amend their invention patent applications during prosecution, and this also occurs in Taiwan. Basic regulations of making an amendment to an invention patent application in Taiwan are similar to the patent systems in other countries but some details may be different. However, making amendments to a postpre-granted patent application may not be allowed in some countries, or may be allowed with specific narrow requirements. In Taiwan, although patentees are allowed to amend their granted patents if the amendment complies with particular requirements, making amendments to a post-granted patent is still much more restricted than making amendments to an application still undergoing examination, and is different from the practice thereof in other countries.
We hope that this Supreme Administrative Court judgment becomes a milestone for the practice of making amendments to a postpre-granted patent application proper and brings its implementation in Taiwan closer to international practice.
(This article was originally published in the June 2011 issue of the Managing Intellectual Property magazine.)
(Author: Jerry LIN joined Tai E in 2005 and was made a partner in 2009. As a qualified and registered Patent Attorney, Mr. Lin’s ex-perience encompasses a variety of complex patent and intellectual property litigation matters., Mr. Lin, with his background of electronic engineering, has represented clients ranging from startups to large privately held companies, to multinational corporations. He has been appointed as the Deputy Secretary-general ofre the Taiwan Patent Attorneys Association (TWPAA) in 2011, where he is an active member deeply involved with the operation of the Patent Committee and the Cross-Strait Affairs Committee.)
