BY MENG-HSUEH KU

Portions of the Patent Examination Guidelines (hereinafter “the Guidelines”) have been reviewed and revised in order to reflect the most recent needs in examination practice, ensure consistency and improve examination quality.

The following content focuses on revisions related to inclusion of negative limitations.

(I) Revisions to Part 2, Chapter 6 “Amendment”

According to Chapter 6, Section 4.2.2 “Allowable Deletion” of the Guidelines, “before an Official Letter is issued by the Taiwan IPO, if a voluntary amendment to claims of a patent application is made by an applicant to include negative limitations in the claims in order to exclude portions that overlap with the prior art, the applicant should submit relevant documents of the prior art and provide an explanation for the Examiner’s review. If such documents are not provided, the amendment will be deemed to introduce new matter into the claims. However, if the relevant prior art has been recited in the original disclosure of specification, claims or drawings of the patent application-as-filed, the provision of such documents is unnecessary.”²

Specifically, the following content is added to Section 4.2.2:

“Where an applicant, before an Official Letter is issued, voluntarily makes an amendment to the claims to include negative limitations so as to exclude portions that overlap with the prior art, if the excluded portions do not have basis in the original disclosure of  specification, claims or drawings of the patent application-as-filed, relevant documents for the prior art to be excluded should be provided along with an explanation. If such documents are not provided, the amendment shall be deemed to introduce new matter.”³

(II) Revisions to Part 2, Chapter 9 “Post-grant Amendment”

According to Chapter 9, Section 6 “Notes for Examination” of the Guidelines, “in light of the above revisions to Part 2, Chapter 6 ‘Amendment,’ a new examination principle is added with respect to claims that contain negative limitations in order to exclude portions that overlap with the prior art.”⁴

Specifically, the following content is added to Section 6:

“The abovementioned post-grant amendment including negative limitations is limited to conditions under which claimed invention intends to overcome issues involving lack of novelty, lack of novelty based on legal fiction or the first-to-file principle based on citations. However, the abovementioned post-grant amendment including negative limitations is not applicable to citations having the same filing date, or priority date if applicable, as the patent application. In addition, if the claimed invention includes features directed to human beings and which, therefore, are contrary to public order or morality, the post-grant amendment can be made to exclude such features directed to human beings.”⁵

“Where a patentee makes a post-grant amendment to the claims by including negative limitations so as to exclude portions that overlap with prior art, if the excluded portions do not have basis in the original disclosure of specification, claims or drawings of the patent application-as-filed, relevant documents for the prior art to be excluded should be provided along with an explanation. If such documents are not provided, the post-grant amendment shall be deemed to introduce new matter.”6

¹ Revisions to the Patent Examination Guidelines
https://www.tipo.gov.tw/tw/cp-85-910484-c6f3d-1.html

² Key Points for Revisions (page 1, “4.2.2 Allowable Deletion”)
https://www.tipo.gov.tw/tw/dl-282403-659eb2e72a264344b1c1556555a8e830.html

³ Comparison Table for Revisions (page 2, “4.2.2 Allowable Deletion”)
https://www.tipo.gov.tw/tw/dl-282404-2d1e79a52bbe43e7bb092792c541fc6f.html

⁴ Key Points for Revisions (page 1, “6. Notes for Examination”)
https://www.tipo.gov.tw/tw/dl-282403-659eb2e72a264344b1c1556555a8e830.html

⁵ Comparison Table for Revisions (pages 6-7, “6. Notes for Examination”)
https://www.tipo.gov.tw/tw/dl-282404-2d1e79a52bbe43e7bb092792c541fc6f.html

⁶ Comparison Table for Revisions (page 7, “6. Notes for Examination”)
https://www.tipo.gov.tw/tw/dl-282404-2d1e79a52bbe43e7bb092792c541fc6f.html 

*Section Chief of International Patent Division at Tai E International Patent & Law Office