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Use of dependent claims in the administrative litigation stage (2019.9.25)

                                                    WILSON CHENG

I. Overview

Claims of a patent application are divided into independent claims and dependent claims. The dependent claim depends on an antecedent independent claim or dependent claim, whose technical content includes all the technical content of the depended claim and additional technical content other than the content of the depended claim.

In addition to the advantage of having the possibility of being granted due to narrower scope than depended independent claim when the depended independent claim does not have inventiveness during the prosecution stage, the dependent claim can recite a more specific embodiment. Also, the dependent claim has importance during the administrative litigation stage.

II. Influence of claims partially rejected for grant of a patent application

The Patent Examination Guidelines stipulate that after the claims are examined on a claim-by-claim basis, if any rejection reason is found, the Examiner should issue an Official Letter including rejection reasons informing the applicant to respond to overcome the rejection reasons. If the response and/or amendment submitted by the applicant cannot overcome all the rejection reasons in the Official Letter, i.e., at least one rejection reason still exists, the Examiner may issue an Office Action of rejection. Therefore, if all the claims should be allowed or rejected, naturally an Office Action of allowance or rejection will be issued. However, if the claims are partially allowed and partially rejected, the Examiner may issue an Office Action of rejection finally.

For example, the gist of the IP Court judgment 97,行專訴34號 (97 Xing Zhuan Su No.34 (in transliteration) is as follows. If a patent application has two or more claims, the Taiwan patent authority should examine the inventiveness of the claims on a claim-by-claim basis. After examination, the decision of the final Office Action should be rejection or allowance of the patent application based on consideration of treating a patent application as a whole. It is not possible to render a decision of the claims partially allowed and partially rejected. Claim 1(independent claim) and claims 2, 4 and 7(dependent claims) of the present application do not have inventiveness while claim 3(dependent claim) does have inventiveness. The examiner issued an Official Letter informing the applicant submitting arguments or amendments for the claims. However, no arguments or amendments were submitted. The examiner cannot separate claim 3 from the rejected claims. Therefore, claim 3 along with the rejected claims was rejected which is not unreasonable.

In addition, the IP Court judgment 104,行專訴118號 (104 Xing Zhuan Su No.118 (in transliteration) states that although the Taiwan IPO (the defendant) deems there is no reasons to reject claims 1 to 14 and claims 21 to 25 in an Official Letter, however, the plaintiff (the applicant of the present patent application) did not respond to the Official Letter for claims 15 to 20 in due time. The defendant continued to examine the present application based on the material in hand and cannot separate claims 1 to 14 and claims 21 to 25 from claims 15 to 20 which lack inventiveness. Claims 1 to 14 and claims 21 to 25 were naturally along with claims 15 to 20 rejected. Therefore, the defendant rendering an Office Action rejecting all the claims is not unreasonable.

Thus, an examiner should examine independent claims and dependent claims on a claim-by-claim basis. If the independent claims do not possess inventiveness, the inventiveness of the dependent claims should also be examined. After claim-by-claim examination, if the claims are partially allowed and partially rejected, because the Taiwan Patent Act does not have regulations of partially allowing or rejecting the claims, the Examiner may issue an Office Action of rejection for partially allowed and partially rejected claims finally based on unity of a patent. 

III. Standpoints of the Taiwan IP Court for claims

When the Taiwan IP Court tries an administrative suit case, if the rejection reasons for any one of the claims made by the Taiwan IPO are illegal or improper and the arguments filed by the plaintiff are reasonable, the IP Court will revoke the appeal decision and the decision made by the Taiwan IPO.

The IP Court judgment 102,行專訴66號 (102 Xing Zhuan Su No.66 (in transliteration) states that the defendant (Taiwan IPO) issued an Office Action to reject all the claims of a patent application filed by the plaintiff based on claims 1 to 13 lacking inventiveness. The plaintiff filed an Appeal which was subsequently rejected by the Ministry of Economic Affairs (MOEA). Then the plaintiff filed an administrative suit with the Taiwan IP Court. The IP Court deemed that claims 1, 2 and 5 to 13 are not inventive. However, there is no sufficient evidence to prove claims 3 and 4 are not inventive. The Taiwan IPO (the defendant) issuing a rejection decision based on uninventiveness of claims 1, 2 and 5 to 13 is not unreasonable. However, the combination of citation 1 and citation 2 cannot prove claims 3 and 4 are not inventive. Therefore, the rejection decision regarding claims 3 and 4 being not inventive is improper and the appeal decision and the decision made by the Taiwan IPO were revoked. 

Moreover, the IP Court judgment 105,行專訴37號 (105 Xing Zhuan Su No.37 (in transliteration) states that the defendant (Taiwan IPO) issued an Office Action to reject a patent application filed by the plaintiff based on the specification being not fully disclosed, all the claims being not disclosed in a clear manner and all of the claims lacking inventiveness. The plaintiff filed an Appeal with the MOEA. However, the MOEA rejected the Appeal. Then the plaintiff filed an administrative suit with the Taiwan IP Court. The IP Court deemed that only claims 2 and 9 and corresponding specification are not disclosed in a clear manner and not fully disclosed. In addition, citation 1 does not have sufficient evidence to prove claims 11 to 14 are not inventive. Thus, the Taiwan IPO issuing a rejection decision for the present application is not improper. Therefore, the appeal decision and the decision made by the Taiwan IPO were revoked. 

Therefore, how to convince a judge of a rejection decision for at least one claim being illegal or improper during the administrative suit stage is important in order to urge the judge to revoke the appeal decision and the decision made by the Taiwan IPO. Because for a set of one independent claim and its dependent claims, the scope of the independent claim is larger than those of the dependent claims and possibility of uninventiveness for the independent claim is larger than that for the dependent claims. Some of the dependent claims are additions or limitations of conventional techniques while some of the dependent claims are not conventional techniques, which should not be rejected when the independent claim is not inventive. However, if the dependent claims being not conventional techniques are rejected, it will be a critical factor to urge a judge to deem that rejecting these dependent claims is illegal or improper during the administrative suit stage. Consequently, the judge will consider whether the rejection decision made by Taiwan IPO should be revoked, under the condition the citation cannot prove the claims to be not inventive. The Taiwan IPO should issue a legal decision based on the legal opinion of the judgment.           

In addition, the discussion result in Year 2017 IP law seminar No. 2 of the Judicial Yuan confirms the above-mentioned principle. The topic of No. 2 is “for an invention patent application, if the Taiwan IPO issues an Official Letter to inform the applicant all the claims are not inventive. Then the Taiwan IPO issues a rejection decision for all the claims after the applicant files a response. The applicant files an Appeal with the MOEA and the Appeal is rejected. If the judge in the IP Court deems some of the claims are inventive, whether or not the decision should be revoked to give the applicant a chance to amend the claims or the rejection decision should be upheld owing to some of the claims being not inventive.” The discussion result of the seminar is the decision should be revoked to give the applicant a chance to amend the claims.    

IV. Conclusions  

When a Taiwan invention patent application proceeds to the re-examination stage after a rejection Office Action was rendered, if an Official Letter states some of the claims will be rejected and the rejection reasons for the other claims are not found, the applicant may consider filing a divisional application for the other claims to ensure the other claims to be granted because the application may be rejected because of an unsuccessful response for some of the claims. Even if the IP Court revokes the decision and the IPO grants the other claims finally, the acquisition time of the patent right of the other claims will be postponed. Therefore, filing a divisional application for the claims without rejection reasons is a useful/pragmatic/thinkable strategy during the prosecution stage.         

 

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