12.02.2025
Introduction to Numerical Value Amendments in Patent Applications
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I. Introduction
During the patent prosecution process, amendments to the claims often involve adjustments to numerical values or numerical ranges in order to distinguish the invention from prior art citations. However, patent laws in different jurisdictions vary significantly with respect to whether an amendment may introduce a numerical value (or range) that is not explicitly disclosed in the description, claims, or drawings as originally filed. The following discussion focuses on the amendment practice concerning numerical values under the Taiwan Patent Examination Guidelines.
II. Relevant Regulations, Examples and Analysis
Regulations and Examples
According to Chapter 6 of Part II of the Patent Examination Guidelines [1], the examination of amendments to the description, claims, or drawings is to determine whether the content of the amended description, claims, or drawing meets the requirement that amendments “shall not extend beyond the scope of content disclosed in the description, claim(s), or drawings as filed.” The “scope of content disclosed in the description, claim(s), or drawing(s) as filed” refers to all matters that have been clearly recited (obviously presented) in the description, claims, or drawings (except for the certified priority document) as filed on the date of filing, or to matters that a person ordinarily skilled in the art can directly and unambiguously understand from the description, claims, or drawings as filed, in which case the evaluation is not limited to the literal meaning of a word for word interpretation of the description, claims, or drawings as filed.
Allowable Amendments
1. Adding into the claims a numerical value or range that has been explicitly recited in the description as filed, for example:
a) Restricting a broader claimed range to a preferred range defined in an embodiment or expanding a narrower range to a preferred range defined in an embodiment.
b) The endpoint values of the amended numerical range have been disclosed in the description, claims, or drawings as filed, and the amended numerical range is included in the numerical range disclosed in the description, claims, or drawings as filed. For example, the original claim recites a temperature range of 20-90℃, and the description or the claims as filed further recite specific temperature values 40℃, 60 ℃, and 80℃ within the 20-90℃ range. In this case, it is allowed to amend the claimed temperature range to 40-80℃, 60-80℃, or 60-90℃.
2. If the claimed numerical value belongs to the prior art, an exception for amendments through a disclaimer (e.g., not comprising, not including) is allowed for numerical values that are not disclosed in the description, claims, or drawings as filed. For example, the original claim recites a certain value X1=600-10,000, and the range disclosed by the prior art is X2=240-1,500. When X1=600-1,500 lacks novelty due to partially overlapping with X2, because the value 1,500 was not disclosed in the description, claims, or drawings as filed, it is not allowed to include this value and amend the claim to recite X1=1,500-10,000. However, the exception allows disclaiming the overlapping parts of the numerical range by amending the claim to recite “X1>1,500-10,000” or “X1=600-10,000, but not including 600-1,500,” provided that the amendment can be supported by the description as filed and is not in conflict with other parts of the description, claims, or drawings as filed.
Non-Allowable Amendments
1. Introducing a new numerical value that is not recited in the description, claims, or drawings as filed or deleting a numerical value that substantially introduces a new technical concept would introduce new matter and is not permitted in principle.
2. Where numerical values are only present as discrete numerical values in the embodiments without explicit disclosure of a range or without any disclosure from which a range can be directly derived, combining those values to form a new range and introducing it into the claims would introduce new matter and is not permitted. For example, where the examples merely exemplify two viscosity values of 3,500 cP and 10,000 cP respectively and the description does not disclose a viscosity range, incorporating a viscosity range of 3,500 cP to 10,000 cP into the claims would introduce new matter since values other than those two discrete numerical values in this range cannot be directly and unambiguously derived from the matters disclosed in the description, claims, or drawings as filed. Moreover, for example, where the description recites a viscosity range of 3,500 cP to 10,000 cP and the examples exemplify a viscosity of 12,000 cP, incorporating a viscosity range of 3,500 cP to 12,000 cP into the claims would introduce new matter since the range 10,000 cP to 12,000 cP cannot be directly and unambiguously derived from the matters disclosed in the description, claims, or drawings as filed.
3. Limiting the claimed numerical value or range to distinguish it from the prior art while the limited numerical value or range cannot be supported by the description as filed and is in conflict with other parts of the description, claims, or drawings as filed is not permitted.
Comparison and Analysis of US and TW regulations
According to the US regulations [2 and 3], amendments to numerical ranges are permitted provided that the original description reasonably conveys to those skilled in the art that the applicant had possession of the claimed range. Even if a continuous range is not explicitly recited, support may be inferred from discrete values or trends (e.g., forming a range from two endpoint values where the context indicates continuity).
In contrast, the regulations in Taiwan are significantly stricter. Where only discrete values are present in the embodiments without explicit disclosure of a range or any basis from which a range can be directly derived, it is in principle not permittable to combine those values to form and introduce a new range into the claims since the continuous range cannot be directly and unambiguously derived from the matters recited in the description, claims, or drawings as filed.
Accordingly, in practice, applicants are advised to explicitly recite anticipated numerical ranges and endpoint values in the description, claims, or drawings as filed to the greatest extent possible, or to provide sufficient embodiments to support the inference of a continuous range to avoid restrictions during amendments.
III. Conclusion
In summary, the regulations in Taiwan adopt a strict approach to amendments of numerical values or ranges, i.e., the amended numerical value and range shall be explicitly recited in the description, claims, or drawings as filed or shall be directly and unambiguously derivable by a person ordinarily skilled in the art from the matters recited in the description, claims, or drawings as filed. Accordingly, numerical values and ranges are an important factor to consider when drafting the description.
IV. References
1. Patent Examination Guidelines, Part II, Chapter 6
2. USPTO Manual of Patent Examining Procedure (MPEP) § 2163.05
3. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)
During the patent prosecution process, amendments to the claims often involve adjustments to numerical values or numerical ranges in order to distinguish the invention from prior art citations. However, patent laws in different jurisdictions vary significantly with respect to whether an amendment may introduce a numerical value (or range) that is not explicitly disclosed in the description, claims, or drawings as originally filed. The following discussion focuses on the amendment practice concerning numerical values under the Taiwan Patent Examination Guidelines.
II. Relevant Regulations, Examples and Analysis
Regulations and Examples
According to Chapter 6 of Part II of the Patent Examination Guidelines [1], the examination of amendments to the description, claims, or drawings is to determine whether the content of the amended description, claims, or drawing meets the requirement that amendments “shall not extend beyond the scope of content disclosed in the description, claim(s), or drawings as filed.” The “scope of content disclosed in the description, claim(s), or drawing(s) as filed” refers to all matters that have been clearly recited (obviously presented) in the description, claims, or drawings (except for the certified priority document) as filed on the date of filing, or to matters that a person ordinarily skilled in the art can directly and unambiguously understand from the description, claims, or drawings as filed, in which case the evaluation is not limited to the literal meaning of a word for word interpretation of the description, claims, or drawings as filed.
Allowable Amendments
1. Adding into the claims a numerical value or range that has been explicitly recited in the description as filed, for example:
a) Restricting a broader claimed range to a preferred range defined in an embodiment or expanding a narrower range to a preferred range defined in an embodiment.
b) The endpoint values of the amended numerical range have been disclosed in the description, claims, or drawings as filed, and the amended numerical range is included in the numerical range disclosed in the description, claims, or drawings as filed. For example, the original claim recites a temperature range of 20-90℃, and the description or the claims as filed further recite specific temperature values 40℃, 60 ℃, and 80℃ within the 20-90℃ range. In this case, it is allowed to amend the claimed temperature range to 40-80℃, 60-80℃, or 60-90℃.
2. If the claimed numerical value belongs to the prior art, an exception for amendments through a disclaimer (e.g., not comprising, not including) is allowed for numerical values that are not disclosed in the description, claims, or drawings as filed. For example, the original claim recites a certain value X1=600-10,000, and the range disclosed by the prior art is X2=240-1,500. When X1=600-1,500 lacks novelty due to partially overlapping with X2, because the value 1,500 was not disclosed in the description, claims, or drawings as filed, it is not allowed to include this value and amend the claim to recite X1=1,500-10,000. However, the exception allows disclaiming the overlapping parts of the numerical range by amending the claim to recite “X1>1,500-10,000” or “X1=600-10,000, but not including 600-1,500,” provided that the amendment can be supported by the description as filed and is not in conflict with other parts of the description, claims, or drawings as filed.
Non-Allowable Amendments
1. Introducing a new numerical value that is not recited in the description, claims, or drawings as filed or deleting a numerical value that substantially introduces a new technical concept would introduce new matter and is not permitted in principle.
2. Where numerical values are only present as discrete numerical values in the embodiments without explicit disclosure of a range or without any disclosure from which a range can be directly derived, combining those values to form a new range and introducing it into the claims would introduce new matter and is not permitted. For example, where the examples merely exemplify two viscosity values of 3,500 cP and 10,000 cP respectively and the description does not disclose a viscosity range, incorporating a viscosity range of 3,500 cP to 10,000 cP into the claims would introduce new matter since values other than those two discrete numerical values in this range cannot be directly and unambiguously derived from the matters disclosed in the description, claims, or drawings as filed. Moreover, for example, where the description recites a viscosity range of 3,500 cP to 10,000 cP and the examples exemplify a viscosity of 12,000 cP, incorporating a viscosity range of 3,500 cP to 12,000 cP into the claims would introduce new matter since the range 10,000 cP to 12,000 cP cannot be directly and unambiguously derived from the matters disclosed in the description, claims, or drawings as filed.
3. Limiting the claimed numerical value or range to distinguish it from the prior art while the limited numerical value or range cannot be supported by the description as filed and is in conflict with other parts of the description, claims, or drawings as filed is not permitted.
Comparison and Analysis of US and TW regulations
According to the US regulations [2 and 3], amendments to numerical ranges are permitted provided that the original description reasonably conveys to those skilled in the art that the applicant had possession of the claimed range. Even if a continuous range is not explicitly recited, support may be inferred from discrete values or trends (e.g., forming a range from two endpoint values where the context indicates continuity).
In contrast, the regulations in Taiwan are significantly stricter. Where only discrete values are present in the embodiments without explicit disclosure of a range or any basis from which a range can be directly derived, it is in principle not permittable to combine those values to form and introduce a new range into the claims since the continuous range cannot be directly and unambiguously derived from the matters recited in the description, claims, or drawings as filed.
Accordingly, in practice, applicants are advised to explicitly recite anticipated numerical ranges and endpoint values in the description, claims, or drawings as filed to the greatest extent possible, or to provide sufficient embodiments to support the inference of a continuous range to avoid restrictions during amendments.
III. Conclusion
In summary, the regulations in Taiwan adopt a strict approach to amendments of numerical values or ranges, i.e., the amended numerical value and range shall be explicitly recited in the description, claims, or drawings as filed or shall be directly and unambiguously derivable by a person ordinarily skilled in the art from the matters recited in the description, claims, or drawings as filed. Accordingly, numerical values and ranges are an important factor to consider when drafting the description.
IV. References
1. Patent Examination Guidelines, Part II, Chapter 6
2. USPTO Manual of Patent Examining Procedure (MPEP) § 2163.05
3. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)
