Field of Endeavor

The present article relates to “new matter” in the patent world, and more particularly to that in the patent claim.

Background Statement

For easy comparison, we list relevant patent law articles of this periodic article as follows:

1. Article 44bis (4) of Taiwan (R.O.C.) Patent Law stipulates that “supplement or amendment made according to the preceding three paragraphs shall not change subject matter of an application; in addition thereto, if submitted after publication of the examined invention application, such supplement or amendment may be entered only under any of the following circumstances:
1. Unduly broad claim;
2. Erroneous matter;
3. Unclear statement.”
2. Article 67(1) of Taiwan Patent Law stipulates that “An invention patentee considering specification or drawing of a granted patent having any of the following circumstances may petition to the patent-dedicated office to amend thereto, provide subject matter of the invention thereof is not changed:
1. Unduly broad claim;
2. Erroneous matter;
3. Unclear statement.”
3. Paragraph 1 of 35 USC§ 251 provides that “whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.”
4. Paragraph 4 of 35 USC§ 251 provides that “no reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.”

The same two words, i.e. “new matter” might have different meanings at different parts of a patent specification. Specifically, a “new matter” in a later stage when a specific specification becomes controversial in a legal dispute needs not be a “new matter” in the original specific specification text.

The present article contemplates to make it clear that amended/added contents of “non-new matter” in the description of the specification text need not be contents of “non-new matter” in the claims of the same application. Stating otherwise, amended/added contents of “new matter” in the claims need not be contents of “new matter” in the specification.

It is therefore an object of the present article to discuss what is meant by “new matter” so far as a claim amendment is concerned.

It is therefore another object of the present article to reveal whether there are any differences while we exercise claim amendment before and after grant or publication of the application.

There are a Taiwan patent (hereinafter referred to as Patent owned by a local individual hereinafter referred to as the plaintiff) having a relatively broad protecting scope for an extensively used component of the personal computer and a corresponding US patent having a relatively narrow claim set being finally amended in view of cited references. The subject matter had been cooperatively developed with a local affiliated factory by a foreign internationalized incorporation buying the component protected by these patents from a local internationalized incorporation before the filing date of the Patent, but not been sought patented possibly due to the fact that it did not appear to be so important then. Moreover, according to the established ISO practice, documents need only be stored for 5 years so that it had been unavailable for the foreign internationalized incorporation and the local internationalized incorporation (hereinafter referred to as Defendant) and affiliated factory (hereinafter collectively referred to as Defendants) to locate any “direct” material or documents to evidence to the above effect.

Interestingly, although ‘direct’ proofs showing that Defendants, in fact, developed the patented subject matter earlier than the plaintiff did are not available, there do exist many ‘indirect but concrete’ materials to so substantiate. More interestingly, the Taiwan Patent Office (or Intellectual Property Office, IPO, more exactly) or other administrative authority is frequently conservative or unwilling to adopt ‘indirect’ proofs for rendering its action. On the contrary, any kinds of courts including civil, criminal and administrative ones are normally happy to adopt the ‘indirect’ material or document for the proving purpose. What are even more interesting include that the Taiwan civil and criminal courts are entitled to review or reverse the IPO made action but never so exercise since they believe the IPO is more competent than it to make decision for matters relating to the substantive reality of the intellectual property rights, that the Taiwan civil and criminal courts are normally rational in adopting an indirect proof to be effective and valid, and that the Taiwan administrative court is theoretically entitled and/or obliged to review and reverse the IPO made action but is extremely passive or even reluctant to revoke the IPO rendered action. As such, if one is subtle enough, he or she can find that an ‘indirect’ proof newly submitted to the court, even the administrative one, might always be accepted thereby; but if the “same” or “exact” indirect proof had been considered by the IPO, it is of a great probability that the court will lose its interest to review the possible adoptability of said ‘indirect’ proof.

As a matter of fact, the above unjust situation normally might have similar occurrences in various countries. It is interesting to discuss to some further extent this topic. In re Portola Packaging Inc., the US patent practice held that ”if prior art was previously relied upon to reject a claim in a prior related Office proceeding, the Office will not order or conduct reexamination base solely on such prior art.” It is clear that this holding is not closely related to our topic. Nevertheless, it oppositely makes it clear that a higher administrative or judicial review can certainly revoke or change the original IPO decision or action. More importantly, it is to be established that a higher administrative or judicial review over the action rendered by the lower administrative authority does not harm anything if the opinions in the original action rendered by the lower administrative authority should be and were rooted out, which merely relates to the basic check-and-balance theorem of a democratic system.

There is a saying that the judicial system or decision should be regarded like the chastity of the queen, which should leave no room to be doubtful. We have made it clear that the higher administrative court review over the administrative authority for changing the opinions or canceling the original action should encounter no obstacle or active or passive reluctance since it merely relates to the exercise of a due process of law. We would like to expressly add here that it is natural and well-founded for a court to contrarily judge by itself the effectiveness of a specific fact, event or truth which has been otherwise applied and taken in another court for a related case or matter. Said court should not give up its rights and obligations to independently judge and determine the effect of the specific fact, event or truth even when under its independent judgment and determination, it looks like two decisions respectively made by said court and the another court are opposite, which needs not lead to the conclusion that the judicial justice or the queen’s chastity could or need be doubted in that:

1. As an example, in the past, the Chinese female always retains their virginity before their marriage. It is reported that, as a result of “the modernization of the society,” more and more Chinese females lose their virginity before marriage. It appears to be correct for us to take that the chastity is different from the virginity. Specifically, if the loss of the queen’s virginity is caused by the king before or after their marriage, the queen does not in any way lose her chastity. Accordingly, the intimate relationship between the queen and the king could not in any way harm the chastity of the queen. In the situation that a latter judicial decision, which needs not be rendered by a higher court, overrules a former judicial decision, which needs not be rendered by a lower court, as the judicial system or decision is simulative of the queen, the king should be the “justice” rather than the judicial decision itself since a latter judicial decision itself cannot change the former one. Specifically, the former one is overruled by the “justice” contained in the latter one rather than by the appearance of the latter one.
2. Stated otherwise, although the phenomenon that the judge wears the wig in the oceanic law system can improve the solemnity of rendering a judicial decision, the essential bases for earning the solemnity come from the real justice fostered in the decision rather from the existence of a judicial decision per se. Accordingly, whenever the king finds it necessary to appear or present itself again, the queen, i.e. a relevant judicial decision serving as the later-found justice-carrying medium and changing or overruling the previous decision will reappear to announce what the ‘justice’ really is but never represents that she was wrong on the previous decision. Under such interpretation, the queen only provides her body or pretty looks, i.e. the judicial decision itself, and her contents she presents are a specific incarnation of the justice or king. If there is a subject, who should be blamed, it must be the justice or king which appears on the decision or the one who makes the specific incarnation of the justice rather than the queen or the judicial decision per se. Accordingly, the behavior of overruling a previous decision does not necessarily mean the loss of the queen’s chastity.
3. It appears having been well-taken all over the world that whether the queen (a female) retains her virginity before her marriage to the king (her husband) is not so important. If there is something in this regard which is important, it must be the queen sticks to her chastity after marriage. In terms of the legal language, a decision or an action cannot take care of all kinds of variables in the human history but can only deal with specific facts defined or found in a limited period of time within a specified field of territory. Specifically, since it appears that the female virginity is not critical to the happiness of a marriage, variables not in the limited period of time or not within the field or territory should not be taken into consideration for judgment as to whether the queen retains her chastity or the decision clearly presents what the justice is. More exactly, what we are talking about is whether the queen or the decision has properly shown in her contents what the justice is or should be.
4. Accordingly, the saying that the judicial system or decision should be regarded like the chastity of the queen seems to have a poor logic since it appears to be more logically correct to change the saying into “the judicial decision should present justifiable contents capable of surviving investigations or criticism by anyone.” Under such understanding, whether the people respect the decision is no more relevant to the chastity of the queen but only relates to whether the king or the justice is properly behaving himself in or appears on the decision or on the nice looks of the queen. The main target in dispute is the king or justice rather than the queen or decision. Accordingly it would appear to be nearly correct if we take that the judicial system or decision need be respected only when the justice or king has correctly presents itself on the decision or queen. Even if this is true, who can determine what the justice is? How can we determine a situation is correct?
5. Strictly speaking, under a normal efficient and careful investigation and trial, contents of a decision generally reflect the truth and justice so that the king (justice) and the queen (decision) are bundled together. As such, subject the queen to be doubtful normally will subject the king to be doubtful too. Nevertheless, what is concerned here is that the lower administrative authority decline to render its action based on the ‘indirect’ proofs which appear to be always acceptable in kinds of courts and such action even has been somehow affirmed by the administrative court. From a pure logic reasoning, it would appear that what we attempt here to sever the king (justice) from the queen (decision) is sinless since it would help anyone to bravely scrutinize whether the justice carried on the decision is really justifiable. The new order we establish is that every emerging decision is subject to be researched or overruled by a truth-finder. Such thinking is not rebellious or sinful since every found fact might be mistaken, prejudicial or untruthful. From an opposite point of view, if the originally decided fact is generally correct, why it is necessary for us to worry about the queen will lose her chastity since it would relatively difficult for one to overrule the previous ruling.
6. Through the above confusing arguments, it might be interesting for us to further develop the above thoughts to a further degree. Is it necessary for the queen to stick to her chastity? As a result of the development of the economic society, interactions between individuals get more and more frequent. Back to the conventional meaning of the above saying, if the queen has a great work pressure to release and many opportunities to enjoy the work with and admire wonderful performances of other males, is it possible that the queen might lose her chastity? In terms of the legal wordings, if the judge is terrified by the rascal to render specific contents of a decision, the government does not warrant to provide an effective protection to the personal safety and the entrepreneur definitely offers a big sum of money for buying said specific contents of the decision, how many judges can stand survived over their conscientious test? It is not necessary for us to desperate about this since it is well-recognized that ideal and reality need not necessarily be coincident. Specifically an impossible reality need not necessarily stand for an ideal which is permanently impossible to come true. Accordingly it appears deserving us to continuously take that it is a great virtue for the queen to stick to her chastity.
7. We must confess that some people might consider it ridiculous to compare chastity with the judicial decision. Nevertheless, it is believed to be generally correct for us to pursue the dreams of obtaining the real justice in a court decision and having the queen’s chastity after marriage. We would like to arouse here a more stinging issue, i.e. is it necessary for the queen to retain her virginity before marriage? Under this more and more westernizedly cultivated world, this might be a silly question since it is a mix of physiological need, biological sentiment, life experience, sublimed wisdom…etc. for one to have, experience and satisfy the sexual desire. It might have no standard answer and might be very difficult to answer. In terms of the legal language, a wrong decision or fake justice could be rectified by the final real justice so that the existence of the wrong decision or fake justice is sometimes a must before the forthcoming of the real justice. Accordingly since the wrong decision or fake justice is closely related to the loss of the queen’s virginity before the appearance of the final justice by which the queen keeps her chastity, it would appear that the queen’s virginity is irrelevant to the queen’s chastity. Nevertheless, as a Chinese, we prefer the queen retain her virginity before her marriage, if possible. Perhaps, for a long period of future time to come, we have the opportunity to express our opinions in this regard purely from the viewpoint as to how to lead a happy human life.

It appears that we have gone too far beyond our primary topic to which let us direct our most apparent attentions. Plaintiff asks the local internationalized incorporation to offer a relatively lower reasonable sum for settlement by which he can use as a sample for summoning various internationalized incorporations to offer really reasonable terms for settlements by which it will be absolutely true for him to become a billionaire. Through sticking to such acknowledge, he resolutely rejected the he-alleged “kidding” sum of NT$300,000 for an amicable settlement with the local internationalized incorporation which always hates to have any legal dispute with anyone else. As such, two parties have a patent war in which the author of the present article was invited to participate.

Upon initial analyses, it can be understood that:

1. In the infringement action, Plaintiff will eventually win the game since the general court will never review the propriety of the patent rights which can only be revoked by the invalidation proceedings.
2. Once the infringement action is initiated, Defendant can escape infringement only through settling with the plaintiff, in addition to the invalidation proceedings if what it manufactures or sells fall into the purview of the protecting scope of Plaintiff’s Patent.
3. Defendants own a first batch of evidences (hereinafter referred to as First Batch) capable of narrowing down or even invalidating the claims of Patent and a second batch of ‘indirect’ evidences (hereinafter referred to as Second Batch) capable of evidencing Defendants were the really first developers.
4. Defendants accepted the advice that the Taiwan Intellectual Property Office (hereinafter referred to as IPO) might reject to adopt Second Batch of ‘indirect’ evidences for invalidating Patent so that they took the position that if an amicable ‘settlement’ is not impossible, they would not want to institute the invalidating proceedings. Defendant also did not want to lose the possible opportunity of having a rigorous ‘settlement’ sample with Defendant so that a patent infringement action or the patent invalidating proceedings did not begin easily or early.
5. It is interesting to take notice of the fact that a lot of bilaterally unilateral-asserted kind proposals were proposed and negotiated for a relatively long time without any fruitful outcome. Accordingly Plaintiff brought forth the infringement action before the court and Defendant initiated the invalidating proceedings before IPO.

As we are discussing the patent invalidation, it is also interesting to note that IPO is positively engaging the works to cause legislated an article in the Patent Law that an interested party shall have no rights to invalidate a patent if it has a gross negligence in failing to duly raising the invalidating proceedings in a timely manner. It is believed that such efforts are caused as a result of the pending invalidation of “Non-Knifing Plastic Adhesive Tape” we represent, which might force IPO to bear a liability of huge damages according to the “State Compensation Act.” To this effect, we have the following comments:

1. It is questionable that an interested party can no longer request the invalidation proceedings simply because it had a past gross negligence.
2. It is believed that the interested party has the freedom to choose the timing to effectuate the invalidation proceedings as long as relevant requirements are met.
3. Where there is a right or an injustice, there is a measure for relief. We do not foresee the successful IPO-attempted possibility of additionally causing legislated a paragraph, “the invalidation proceedings in the preceding paragraph shall be instituted in one year after the necessitated extinction of the patent right; if the cause occurs or is aware later, the one year period shall be counted from occurrence or awareness provided this will not apply if there has been 5 years since the necessitated extinction of the patent right.” We will comment in more details if this paragraph will finally become statutory.

All court judges here are encouraged hereby that they are competent to find for any case what and where legal issues and technical issues respectively are. The former ones relate to their expertise and they can ask or require external sources to help resolve latter ones. A clever and clear mind can always melt the entanglement and sever legal issues from technical ones.

It is not known whether people in foreign countries will find their law system is effectively protective and their officials either in the administrative or judicial authorities are justificatory. It is also unknown whether we are lucky (e.g. what we handle are tough cases) or unfortunate (e.g. the officials we encountered are ‘bad’ fellows) enough to find that our law system is not so effectively protective and our administrative or judicial officials are not always justificatory. We will try to describe metes and bounds of such situation as follows:

1. Suppose:
1. The Plaintiff initially losing its rights in the Patent ultimately secured the Patent in view of the First Batch, which in fact, can at least narrow down the claim scope of the Patent.
2. The Second Batch initially dropped off by the IPO does relate to evidences capable of invalidating the Patent.
3. The Defendant not only finally loses the game with respect to the First Batch but also loses the game seeking the relief based on the Second Batch in the second round of administrative relieving proceedings.
2. It is reported that the success rate before the Board of Appeals is in the range of 25% and that before the Administrative Court is lower than 3%. If it becomes necessary for the Defendant to seek relief in the second round of administrative proceedings, it might lose the case because:
1. If the person in charge of the case in the original action rendering authority (which need not necessarily be the IPO in the social reality) could find the effectiveness of the Second Batch in a later stage, he or she will possibly neglect such found truth in order that his/her authority can escape the reliability as stipulated in “State Compensation Act.”
2. It is imperative that the Plaintiff will take the Patent, which had been confirmed by Board of Appeals and Higher and Supreme Administrative Courts to sue infringement against the Defendant in the civil or criminal Courts both of which can judge any ‘fact’ (e.g. whether the Second Batch will destroy the Patent) according to the law but hate to so do as above-mentioned. Kind judges in the later two courts sometimes might urge the Defendant to argue the prerequisite (e.g. whether the Patent is really valid) before the pertinent authority rather than their courts.
3. We cannot determine here why we have a law system or administrative or judicial officials as above-described? Is it our racial inherency? Is it originated from our problematic education? Is it the tendency of the world? If yes, the future of the human being is dark?
3. Having the above bases, we considerately reflect as follows:
1. To rectify or overrule a previous action or decision needs guts, a kind mind and incentive. To have guts and a kind mind always brings forth a series of troubles and additional incumbencies. If we do not have enough guts to so behave ourselves, why we should have the basis to require administrative or judicial officials to so conduct themselves?
2. While the time, the technology and the world are all advanced, it is believed that we cannot immediately answer whether the human society is really advanced? So far as the Chinese society (in the metropolitan areas) or human or world society is concerned, the moral components in the society or between people appear to be diminishing while the economical or realistic components are increasing.
3. The Chinese traditionally categorize incentives in this world into two kinds, i.e. fame and interests. Can we develop another kind of incentive to encourage administrative and judicial officials to behave themselves like justice angels in the human society? Will it do if we lower the reliability they should bear for a self rectification in due time but impose a heavy reliability they should have if they escape from the opportunity of serving as a justice angle?
4. It appears we have gone too far from our topics and should stop here immediately.

Before formally returning to topics of this article, we would like to list brief items to be discussed first.

Brief Items to be Discussed for Presenting Issues We Concern

*A suggestion to those countries which do not have the patent reissue system

Detailed Analyses

*Whether an appeal in part in the invalidation proceedings is legal or acceptable?

After the examination in the invalidation proceedings, IPO decided to invalidate Patent solely on the basis of First Batch (of evidences) but rejected to adopt Second Batch. It is interesting to get known to the fact that Defendant filed an appeal against the rejection of Second Batch but was dismissed because Defendant had won the invalidation proceedings and would not gain any fruits if successful. It is believed that:

1. Such decision is improper since whether it is fruitful for an appellant is not decided or to be judged by the personal feeling of patent examiners or members in the board of appeals but should be determined whether there exist any legal facts, lawful reasons or cause of action. Specifically, if the decision of invalidating Patent were to be dismissed in a later stage and the Defendant did not appeal the invalidating proceedings based on Second Batch, Defendant might have no ultimate alternative to seek an effective relief. In other words, a probable damage or a relief measure possibly effective in the future is a legal basis or cause of action for an action of a party. Accordingly, by allowing the winning defendant to appeal, the succeeding foundation for the defendant is thus deeply rooted, which is certainly fruitful to the defendant. Positively stating, what we try to say here is that in the invalidation proceedings, the appeal in part should be legal enough.
2. In the conventional civil or criminal proceedings, it has been well-taken that an appeal in part can find no controversy. It would be strange to hold that an appeal in part in the invalidation proceedings is inappropriate or illegal since such holding will be in violation of Article 22 of Constitution which provides “other freedom and rights of the people not prejudicial to social order or public policy are all safeguarded by Constitution.” As collateral arguments, an overall victory is the highest prize, psychological food or necessitated encouragement of some kind of person who shall not be deprived off such opportunity in any way.
3. So far as the Second Batch is concerned, the facts and reasons constructed thereupon in appearance or in fact are denied, and the rights derivable therefrom are thus negated. As such a relief should be given to otherwise relieve.
4. Since the issue which is not in dispute (which might be equated to the situation of the Second Batch if not appealed by the Plaintiff who in fact is prohibited from appealing for the Second Batch) will not be decided in the appeal or administrative proceedings, the different outcomes might result in the appeal stage and the administrative stage. This is because in the former stage, the Board of Appeal tends declined to get involved by the appellee while in the latter stage, the Administrative Court is inclined to summon the participation of the defendant. As such those issue derivable from or based on the Second Batch will not be decided by the Board of Appeals but might be decided by the Administrative Court. As described in the above, nevertheless, the Administrative Court normally will not pay much attention or interest to the Second Batch. As such, this possibly relieving stage appears to be not ultimately promising.
5. Even judging from the sole fact that attitudes adopted by the Board of Appeals and the Administrative Court are different, it is believed that we can straightforwardly determine that contents of rights derivable from these two stages respectively in these two authorities are different so that it is extremely improper for one to possibly assert that even if it is correct to take that the defendant had been deprived of the rights to appeal, the defendant still has the opportunity to seek relief in the Administrative Court.
6. As the administrative relieving proceedings are ex parte proceedings in principle, an appeal in part is especially necessary in order that the loser in the IPO can have a better opportunity to protect its rights in time. If an appeal in part were to be denied through powerful reasons presently unknown to us, it should be taken that the administrative relieving proceedings are inter parte proceedings in themselves in order that both parties can have equal and suitable chances to attack and defend as desired to the largest possible extent. In this connection, we see the possibility of allowing the party to select the application of ex parte or inter parte proceedings and wonder whether such allowance will ruin the stability or fixity of the law system? If yes, will the situation be improved if we stipulate that whenever there are winner or loser in part, the administrative proceedings should be an inter parte one. This dilemma comes from the fact that at present, in the IPO, it is the inter parte proceedings participated by both parties. After an action is rendered by the IPO, the winner, in whole or in part, will be dropped from the regular relieving proceedings. As such, it appears to be wrong for the present practice to run in the current way. Specifically, if the present practice will stick to the stability or fixity of inter parte proceedings in the original authority, i.e. IPO, it will be unnecessary for us to suggest here how to solve the difficulty as in the above.
7. The scenario will become more exciting if the Patent will not be finally invalidated on the bases of the First Batch but will be narrowed down with respect to the claim scope since without a relieving petition in due time, the defendant will lose the originally available opportunity to properly and fully safeguard its rights in due course.
8. It will be confusing and terrible if one asserts that even if the first winner or the invalidation petitioner will lose the administrative proceedings in the long run on the bases of the First Batch, the case will finally be remanded to the IPO for reexamination during which the Defendant could thus submit a complete response for relief. This in unconvincing since during reexamination, the IPO normally will focus on the points where the Administrative Court has spotted and thus hardly escapes from what had been discussed in the previous procedures. As such, although the IPO should examine in theory the Second Batch as well during the remanded examination, the Second Batch normally will not occupy much the mind of the examiner or play no meaningful role. If the reexamination action is favorable to the Defendant, there might raise no problem. But, if unfavorable, a harsh situation will arise. This is because during reexamination, the IPO will ‘silently’ reexamine the case on the basis of ‘instructions’ contained in the decision of the Administrative Court without notifying of either party to submit comments or arguments, and normally neglect how powerful the Second Batch might be. Accordingly, a decision unfavorable to the Defendant might be possible. Although the Defendant can still regularly appeal such unfavorable decision on the basis of the First Batch, the Defendant will have an uphill battle if it wants to base its arguments on the Second Batch. This is because:
1. The IPO will ‘strongly’ erroneously assert that its reexamination should certainly be confined to where or what has been rectified by the Administrative Court. Since the Second Batch is not mentioned thereby, the IPO needs not pay any attention thereto.
2. In the second relieving proceedings, the ‘lazy’ Board of Appeals or the ‘over-busy’ Administrative Court will ‘brazen-facedly’ assert that since the Second Batch had been declared to be baseless in the first relieving proceedings, it cannot be understood why the Defendant insists in initiating or submitting reasonless arguments and legal battle?

It is easily understandable that the quick and direct response in the first opportunity is normally the most powerful. It is hard and troublesome for any one to recall and gather necessary and useful materials to restart a legal war after several years. As such, an appeal in part is believed to be necessary under the present patent relieving system.