Does the Scope of the Patent Claim Match the Disclosed Content?
- A Brief Discussion on the Rule of Dedication (2)

11/30/2023

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In the previous article of this series, the situation of "mismatch between the claimed scope and the disclosed content" may trigger the application of the "Rule of Dedication" in Taiwan and the United States. In this article, attempt will be made to summarize several approaches from the perspective of patent applicants or patentees to address the aforementioned mismatch situation and provide preventive measures that can be taken at an early stage.

Handling of mismatch between patent scope and disclosed content 

If the applicant or patentee finds that any portion of the disclosure in the patent specification has been claimed (i.e., to be included in the patent scope), the following methods can be adopted in a timely manner 

1.    When a Taiwan patent application or a US patent application (parent applications) is still pending at the patent office: 

For invention patents, the applicant can file a divisional application[1] or a continuation application[2] (child application) to claim the content disclosed in the specification but not claimed in the parent application, and request patent office to conduct substantive examination on the claims of the child application. It should be noted that the right to claim damages can only be exercised after the patent is granted and published, and in principle, the patent term of both the parent application and the child application will expire simultaneously[3], therefore, the period for exercising the aforementioned rights in the child application is more limited. 

2.    When a US patent application (prior application) has been granted and published: 

For invention patents, when the parent application is no longer pending at the patent office, Applicant is barred from filing any child application since the copending status set forth in item 1 cannot be established. The applicant or patentee may consider the following two approaches: 

A.         File another independent patent application (later application) within one year after the laid open of the prior application: 

According to the current 35 U.S.C. 102(b)(1)(A) provision regarding "exceptions for lack of novelty," any form of earlier publication by the same inventor can be exempted from being considered as eligible prior art for the subsequent independent application filed within one year from the earlier publication by the same inventor, such provision is known as grace period. Therefore, if the above time limit is met, the patentee can file another subsequent independent application during the grace period to protect the contents disclosed in the specification of the prior application which have not been claimed therein. In the previously discussed In re Gibbs case, the court explained that the claims made in the subsequent application clearly express Applicant's intention that the content explicitly disclosed but not claimed in the prior application is not intended to be dedicated to the public, and if the prior application is not eligible prior art as defined by the patent law, then protecting the contents of the disclosure in the specification of the prior application which have not been claimed therein through the subsequent independent application is an appropriate approach. The patentee can consult with a US attorney regarding this matter. 

B.         Request reissue from the patent office (should be applied for within two years after the grant of the prior application if it involves a broadening reissue): 

If cannot handle the above situation A due to missing the deadline of the grace period, the patentee can consult with a US attorney to see if there is a possibility of requesting a reissue on a case-by-case basis. The premise for requesting a reissue is that the patentee believes that the original issued patent has an "error,"[4] and one of the examples of "error" listed in the MPEP is "the patentee claiming more or less then he had a right to claim in the patent." It should be noted that the technical features to be claimed in the reissue application should not be the ones that the applicant has abandoned or amended during the examination process in order to obtain the patent right. Moreover, when exercising the right of a reissue patent against an accused infringer, the accused infringer can assert intervening rights[5] as a defense. 

3.    When a Taiwan application (prior application) has been granted: 

For invention patents, regardless of whether the application has undergone early laid open procedure, the application will be published on the official gazette on the date of grant. Therefore, according to paragraphs 3 and 4 of Article 22 of the Taiwan Patent Act[6], the grace period cannot be applied to the content disclosed but not claimed in the prior application, and hence said content will become eligible prior art to the claims in the later application. To this end, it is not possible to claim the content disclosed but not claimed in the prior application in another subsequent independent application in Taiwan. If the Applicant is desired to claim the disclosed but unclaimed content by way of post-grant amendments, the case should be evaluated to determine if the post-grant amendment simultaneously meets the requirements of "achieving the purpose of the invention prior to the amendment" and "not substantially expanding or changing the scope of the patent claim as published". For more details, please refer to the previous article of this series.

Conclusion 

Patent owners often discover the problem of mismatch between the claimed scope and the disclosed content in a later stage when exercising their rights. At this time point, some of the previously discussed approaches may no longer be applicable because the time limit prescribed by law or rules has passed. Therefore, applicants or patent owners may consider the following best practices to avoid the application of "Rule of Dedication" early on when building patent portfolios in different jurisdictions: 

1. Carefully examine whether there is a need for filing divisional or continuation applications upon receiving the notice of allowance: 

The claim scope of a patent application is usually finalized when the notice of allowance is received, and there is still some processing period until the date of issuance of the corresponding patent. During this processing period, it is allowed for a comprehensive review on the claim scope and the disclosed content of the soon-to-be issued patent application (parent application) and establish the copending status of the parent and child patent applications at the patent office. Based on the prior art identified by the examiner during the examination process of the parent application, patent attorney can more effectively examine whether there are technical solutions or features disclosed in the specification, contribute to the existing technology, but have not been claimed in the parent application. In addition to filing divisional applications (child application) in view of the withdrew claims in a Taiwan application in response to lack of unity rejection or withdrew/canceled claims in a US application in response to restriction requirements, patent attorney and applicant should further examine whether there are disclosed content in the patent specification that contribute to the existing technology but have not been claimed the parent application in order to seek protection for such subject matter by filing a copending child application during such processing period. 

2. In addition to planning the claim scope for a patent application, discussions between inventor and patent attorney should also cover the appropriate scope for disclosure in the specification: 

Being more familiar with the development of the technology to be protected, the inventors from time to time may provide an extensive invention disclosure to an extent that include content which deviates from the problem-solution context of the instant invention (the "inventive context" herein). It is advisable to discuss with the inventors whether to protect the non-inventive context in a separate and independent application with commensurate disclosure in the respective specification in order to obtain more comprehensive protection at an early stage. The introduction section in previous article of this series explained that the disclosure in the patent specification serves the purpose of supporting the claimed scope of a patent application. The level of disclosure should at least exceed the threshold set by the patent law and pertinent provisions in each jurisdictions. However, where exactly is the specific boundary of this threshold? How to manage the risk in respect to the application of "Rule of Dedication" while conforming to the disclosure threshold? It is in part relying on the discussion between experienced patent drafters/attorneys and the inventors and/or in-house counsel to make reasonable plans in view of the technical aspects and market trend early on in the patent application drafting stage.