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IPO Revised Examination Guidelines for Post-Grant Patent Amendments
Post-grant patent amendments are allowed in Taiwan. According to Paragraph 1, Article 67 of the Taiwanese Patent Act, a patentee may make the following amendments to the description, claim(s) or drawing(s) of his/her patent: (1) delete a claim(s); (2) narrow down the scope of a claim(s); (3) correct typographical errors or translation errors; and (4) clarify an ambiguous statement(s). However, Paragraph 4 of the same article provides that no post-grant amendment may substantially enlarge or alter the scope of the claims as issued. On December 27, 2016, the Taiwan Intellectual Property Office (the "IPO") published an amendedversion of Chapter 9 of Part 2 of the Guidelines for Patent Examination (the "Guidelines"), which concernspost-grant amendments. The amendments came into force on January 1, 2017.
The main amendments include: (1) changing the basis for determining whether a post-grant amendment has resulted in a substantial change in claim scopefrom the literal meaning of the amendment to the purpose(s) of the claimed invention; and (2) broadening the types of allowable post-grant amendments.
The amendments made to the Guidelines cover the following areas:
1. Narrowing down the scope of a claim(s)
The wording "After the post-grant amendment, the technical filed of and the problem to be resolved by the patent shall remain unchanged" was deleted. The IPO considers this wording unnecessary because narrowing down of the scope of a claim(s) should still meet the requirement of no expansion in claim scope.
2. Correcting errors
The amendments concerning correcting errors state:"A person having ordinary skill in the art…immediately identifies an obvious error …. The intended meaning must have been suggestedin the description, claim(s) or drawing(s) and the error does not affect the meaning of the original text …." This is because regarding the determination of whether a mistake in the patent results from an obvious oversight or error, the original Guidelines did not state that the error can be corrected only if the meaning intended by the patentee is expressly disclosed in the description, claim(s) or drawing(s). To avoid any misunderstanding, the words"have been expressly stated"have been changed to "have been suggested."
3. Clarifying an ambiguous statement(s)
The amendments have also added the following provisions: "If the issued claims are very likely to be misinterpreted, a claim(s) containing a reference to another claim may be rewritten as an independent claim. This type of amendment is also considered to be an amendment 'to clarify an ambiguous statement(s).'"
According to Paragraph 2, Article 26 of the Taiwanese Patent Act, each claim must be written in a clear and concise manner. Therefore, only when a claim containing a reference to another claim is very likely to be misinterpreted can it be rewritten as an independent claim; for instance, a dependent claim thatis broader in scope than, or is inconsistent with, the independent claim from which it depends can be rewritten as an independent claim.
In principle, the amendments only allow patentees to rewrite claims (including both independent claims and dependent claims) containing a reference to a single claim into independent claims. As for claims containing references to multiple dependent claims, the requirements in the "Examination Matters Requiring Attention" section must still be met. To be specific, the total number of claims can be increased only if the number of the claims referred to or serving as base claims is reduced.
4. Determining whether the scope of the claims as issued is substantially enlarged
Under the amendments, changing the use of the invention of a claim is no longer considered to be a type of amendment that substantially enlarges the scope of the claim.
This amendmentis made in line with the amendmentsmade in 2013 to the Guidelines. If the use of the product claimed in a claim merely describestheintended use or the method of use, without implying any particular structure and/or composition of the product, the use recited in the claim does not serve to limit the product. Therefore, with regard to any post-grant amendment made to "use-limited product claims" allowed after 2013, if the usesdos not serve to limit the product, the purpose of the invention, whether before or after the post-grant amendment (modifying or deleting the use), still depends on the structure or composition of the product, and does not depend on any change to the use. This type of post-grant amendment therefore will not substantially enlarge or alter the scope of the claim(s) and should be permitted.
However, all post-grant amendment must be examined in accordance with the laws, regulations and the Guidelines in force at the time of their filing. To avoid any confusion in claim construction, if the post-grant amendment is made to a "use-limit product claim"allowed prior to 2013, the scope of the claim should be determined based on the Guidelines in force at the time of the examination of theclaim. In other words, "the use"does not serve to limit the product. Therefore, any post-grant amendment that changes or deletes any use of the invention of a claim will substantially enlarge or alter the claims and should not be permitted.
5. Determining whether the scope of the claims as issued is substantially altered
The amendments include, among others, changing thebasisfor determining whether a post-grantamendment has substantially altering the scope of the claims as issued from the literal meaning of the amendment (for example,defining a specific claim feature not using a subordinate feature or adding new matter" and "changing the field of the claimed invention or the problem to be solved by the claimed invention" are both consideredto result in a substantial change in claim scope) to the purpose(s) of the claimed invention (for example, amending a claim to include new features that cannot achieve the purpose of the invention is an amendment that results in a substantial change in claim scope.).
Regarding the purposes of inventions, the amendments clearly state: "In principle, in determining the purpose of the invention of a claim, a person having ordinary skill in the art will, based on the invention as a whole,consider the problem to be solved by the invention described in the description, the technical means used to solve the problem and the expected technical functions, compare the claim with the prior art, and then identify the specific purpose of the invention. However, the purpose that is not expressly disclosed but can be directly inferred from the descriptioncan also be recognized as the purpose of the claimed invention.
The latest amendments provide clearerrules for determining whether a post-grant amendment substantially enlarges or alters the scope of the claims as issued. This would be useful guidance to patentees who intend to filet post-grant amendments.