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DOES REWRITING A DEPENDENT CLAIM AS AN INDEPENDENT CLAIM CHANGE THE SCOPE OF A PATENT?
In several of its previous judgments, Taiwan's Intellectual Property Court (IP Court) ruled that, if an independent claim is deleted and its dependent claim is changed to an independent claim, such amendment is permitted since it is only made to the form of a claim and does not substantially change the scope of the patent. For example, the IP Court's judgment No. 2010-HCS-68 states that changing an existing dependent claim to an independent clam does not change the scope of the patent and so such amendment should be allowed. |
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In this regard, the Intellectual Property Office (IPO) promulgated on February 9, 2011 the draft amendment to the Patent Examination Guidelines (Chapter 6 "Amendment" under Section 2). Point 2.4.2 ("Circumstances of Substantial Expansion or Change of a Patent Claim") of the draft includes a new condition as point (5), which provides that if an amendment by deleting an independent claim and changing a dependent claim to an independent claim changes the problem that the technical measure of other dependent claims of the deleted claim aims to solve, even if such technical measure is disclosed in the specification or drawings, such amendment causes substantial change in the scope of the patent. The draft further provides examples of the criteria under Point 2.7.3.1 ("Deleting Independent Claim and Rewriting Dependent Claim as Independent Claim"). |
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Such draft further elaborates the opinion in the above-mentioned IP Court judgments by stating that, if such an amendment changes the problem to be solved by other un-amended dependent claims, it causes substantial change in the scope of the patent. |
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