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Choice of Grounds for Post-Grant Amendment Request Matters
－A Lesson from 2020 Shang Zi No. 233 Administrative Judgment by the Taiwan Supreme Administrative Court
A Taiwan invention patent, “BICYCLE DYNAMO, BICYCLE LIGHTING SYSTEM AND BICYCLE,” granted as Patent No. I499170 (hereinafter called the “Patent at Dispute”) can trace its patent application (Appl. No.: 101122910) filed by its patentee with TIPO back to June 27, 2012, which claimed at the same time priorities of its earlier patent applications filed on July 1, 2011 and October 20, 2011 respectively with GPTO in Germany.
The patentee filed a post-grant amendment request with TIPO on June 12, 2017 on the grounds that errors occur in the description and claim(s) of the Patent at Dispute. The patentee claimed that “DC” in the subject matter of Claim 1, “a bicycle DC generator,” is an error to be corrected, and requested to correct the subject matter of Claim 1 to be “a bicycle AC generator.”
Upon the examination of the post-grant amendment, TIPO recognized that the corrected version dated June 12, 2017 was in violation of the provisions set forth in Article 67, Paragraph 1, Items 3 and 4 of the Taiwan Patent Act, and therefore did not approve the amendment request. Not satisfying with the TIPO’s decision, the patentee filed an administrative appeal which was later dismissed by another decision. The patentee consequently filed an administrative lawsuit, which was again dismissed by 2019 Xing Zhuan Su Zi No. 62 Administrative Judgment (hereinafter called the “Original Judgment”) rendered by Taiwan's IP Court. Against the Original Judgment, the patentee further lodged an appeal, but was dismissed finally and bindingly by 2020 Shang Zi No. 233 Administrative Judgment (hereinafter called the “Appeal Judgment”) rendered by the Taiwan Supreme Administrative Court.
According to the IP Court’s Original Judgment, when reviewing the description, claim(s) or drawing(s) of the said granted invention patent, any person having ordinary skill in the art could not easily detect any obvious errors sufficient enough for him or her to consider it necessary to correct "DC Generator" to "AC Generator." As it is well known to persons having ordinary skill in the art that "DC Generator" and "AC Generator" fundamentally belong to two different power generation systems, each with different meaning, the above post-grant amendment is not a correction of errors. The IP Court further indicated in the Original Judgment that the difference between an AC generator and a DC generator lies in the "Rectifying Device," which can be added to an AC generator to make it a DC generator.
In the appeal, the patentee claimed that the subject matter of Claim 1, “a bicycle DC generator”, is an obvious error unreasonably recited as the actual electricity generated shall be “alternating current” with regard to the components recited in Claim 1. The patentee further claimed that the Patent at Dispute has explicitly recited the "BICYCLE LIGHTING SYSTEM" with the "Rectifying Device” in Claim 16, which is sufficient enough to prove that Claim 1 originally sought to protect the "AC" generator of the Bicycle. Therefore, as the patentee argued, the subject matter of Claim 1, “a bicycle DC generator,” is an obvious error unreasonably recorded.
Agreeing with the opinion held by the IP Court that "DC Generator" and "AC Generator" share different meanings, the Supreme Administrative Court recognized that correcting "DC Generator" to "AC Generator" has substantially altered the scope of the claim(s) as published. The Supreme Administrative Court further indicated in the Appeal Judgment that, while it is true that Claim 16 contains the phrase, "a rectifying device located behind a coil (7), which serves to rectify the current from the coil (7)," Claim 16, a dependent claim depending on Claim 13, is about a bicycle lighting system. The mere addition of a rectifying device is not sufficient to justify that the DC generator contained in Claim 1 is an error unreasonably recorded.
As the difference between alternating current and direct current can be distinguished by any person with common sense in basic electricity, it is difficult for the competent authority and courts to recognize the patentee’s amendment request to correct "DC generator" to "AC generator" as an act without substantially enlarging or altering the scope of the claim(s) as published. In this case, “correction of translation errors” may be considered as an alternative ground for further request. When the application of the Patent at Dispute was initially filed on June 27, 2012 with application documents in German, the term, “a bicycle DC generator,” is translated from "Fahrraddynamo" based on the German counterpart of Claim 1, but the original meaning of "Fahrraddynamo" refers to “a general bicycle generator" without limiting its characteristics to be either “AC” or “DC.” The patentee may instead request a post-grant amendment on the grounds of “correction of translation errors” and claim that the post-grant amendment does not substantially alter the scope of the claim(s) as the post-grant amendment is simply a terminological adjustment to the preamble without altering either the body of the claim or the embodiments contained in the description, and that the adjusted preamble does not alter the "invention purpose" of the original Claim(s). If the subject matter of Claim 1 in the Patent at Dispute can be successfully corrected to "a bicycle generator,” then the scope of the Claim 1 may cover both "DC Generator" and "AC Generator," which is not only in line with what is recorded in the German specification but also closer to the original intention of the patentee in the description and claim(s) of the original patent application.