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Newsletters

Deep & Far Newsletter 2016 ©
Jan, 2016

PENDING ISSUES REGARDING CORRECTIONS TO BE MADE DURING INVALIDATION PART V

Wei-Ting Chou, Patent Director, Patent Group I

Master of Agricultural Engineering, National Taiwan University

Bachelor of Medical Engineering, National Cheng Kung University

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Practicability for Subscheme A

During the administrative remedy for an earlier invalidation case, if a subsequent correction petition is filed for a latter invalidation case, the Examiner should determine whether the petition should be accepted according to the content in the correction.  If it is determined that the correction will influence or change the basis according to which the official decision was made, the correction petition will not be accepted, and the latter invalidation case will be examined based on the originally issued version.  However, if it is determined that the correction will not influence or change the basis according to which the official decision was made, the correction petition will be accepted, and then, the latter invalidation case will be examined based on the correction first.  After the correction is granted published, the latter invalidation case will be examined based on the newly issued version.

Practicability for Subscheme B

During the administrative remedy for an earlier invalidation case, if a subsequent correction petition is filed for a latter invalidation case, the Examiner should determine whether the petition should be accepted according to the content in the correction.  In principle, whether the correction can be accepted is determined in the same way as Subscheme A.  However, if the subject in the original action for all invalidation cases under the administrative remedy is that all of the claims are not invalidated, a subsequent correction petition can be exceptionally accepted.

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