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Introduction to Draft Revision of Patent Examination Guidelines for Post-Grant Amendment



Post-grant amendment of an invention patent is allowed in Taiwan. According to Article 67 of the Taiwan Patent Act, post-grant amendments can be filed for the specification, claims or drawings to (1) delete claims; (2) restrict the scope of claims; (3) correct typographical errors or mistranslations; and/or (4) clarify ambiguous statements. Paragraph 4 of the same article further stipulates that post-grant amendments shall not substantially enlarge or alter the scope of claims as published. The Patent Act sets forth such strict restrictions on post-grant amendments because an invention for which patent protection is sought becomes relevant to public interest upon being published. If the patentee is allowed to amend the specification, claims or drawings arbitrarily, public interest will definitely be affected, which is contrary to the intended objectives of the patent system, that is, fairness and impartiality.

 

The Taiwan Intellectual Property Office finished amending the Patent Examination Guidelines for Post-Grant Amendment and published the draft revision on October 3rd, 2016. In addition, two public hearings were held to collect public opinions on the draft revision.
The focal points of this round of revision to the Patent Examination Guidelines for Post-Grant Amendment are as follows:

 

  1. Restricting the scope of claims


The description, “the technical field of and problems to be resolved by the patent invention shall remain unaltered after post-grant amendment,” is deleted in this round of revision. This is because problems to be resolved are not likely to be altered when the scope of claims is restricted.

 

   2.  Clarifying ambiguous statements


This round of revision makes it clear that “if the published claims involve dependency relations that are complicated or hard to understand, such claims may be redrafted as independent claims” is categorized as “clarifying ambiguous statements,” so such published claims may be amended.

 

   3.  Substantially enlarging or altering claims as published


In this round of revision, “substantially enlarging claims as published” and “substantially altering claims as published” are separately explained so as to better define them.

 

Regarding substantially enlarging claims as published, the situation of “amending a specific use of the published claims to other suitable uses will substantially enlarge the published claims” is deleted. This revision is made in accordance with the amendment made to the Patent Examination Guidelines in 2013, which adopts the principle of absolute novelty when the invention is directed to a product. In addition, the embodiments regarding substantially enlarging the published claims are moved after various situations so as to make them better understood.

 

Regarding substantially altering claims as published, the judgement criteria “whether subgenus technical features or additional technical features that are not belonging to the technical features stated in original published claims are introduced” and “whether industrial applicability field or problems to be resolved by the invention is altered after post-grant amendment” are amended to read “whether claim(s) with additional technical features fail to achieve the inventive purpose of the claims before post-grant amendment,” while the situations of “adding technical features not stated in the published claims but disclosed in the specification or drawings to the claims,” “redrafting dependent claims as independent claims after original independent claims are deleted…” and “altering dependency relations of dependent claims or independent claims written in a reference-making format will substantially altering the published claims” are deleted accordingly. In addition, the embodiments regarding substantially altering the published claims are moved after various situations so as to make them better understood.

 

The main points of this round of revision to the Patent Examination Guidelines for Post-Grant Amendment are as follows: (1) makes it clear that the situation “where claims involve dependency relations that are complicated or hard to understand” is categorized as “clarifying ambiguous statements; (2) post-grant amendment is allowed when the scope of claims as published does not be substantially enlarged or altered due to an amendment of a use in the preamble of an article claim and due to an addition of technical features made to the original claims (including redrafting dependent claims as independent claims after the original independent claim is deleted) that still enables one to achieve the inventive purpose of the claims before post-grant amendment.
 

 


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