Text Versions in Various Countries ©(Part II of
*Whether different text versions either of specification or claims involve a new matter?
It is easy to set a rule that there can be no new matter to be introduced. Nevertheless, to determine whether there really is a new matter is never an easy work. Normally, whether there is a new matter depends on whether what an applicant tries to reclaim or additionally claim for the subject matter of the invention are fully supported in the original disclosure or what an applicant tries to revise the specification for supporting what it has claimed have been duly derivable from the original disclosure. To discuss this issue, it might be interesting for us to find out the opportunities when an applicant desires to submit a different text as follows:
1. The time when it intends to dissolve an unclear description or recitation in the descriptions or claims;
2. The time when it intends to add some passages that it believes does not add new matter for more clearly supporting what it believes it has the rights to claim a scope it contemplates to acquire;
3. The time when places in specification or claims where it has made amendments are so numerous that it or anyone will feel it better to submit a new text version for clarity.
Certainly, in addition to the above, there might be some situations involving a new text version. For example, a new text for claiming inner priority or CIP filing, which, however, is not to be considered here since it will involve somehow a new filing date. For the first time chance, there should be no prohibition for the submission of a new text in order to rectify an unclear description or recitation in the specification so that the only left issue is whether the new text introduces a new matter. It might be reasonable for us to conclude that as long as there is an amendment, there might be a risk of introducing a new matter that might be undetectable before a thorough debate is effected. As a matter of fact, our daily lives are full of kinds of risks but we cannot but lead our normal lives unconsciously surviving over or disregarding those risks since we really need to spend our lives or lifetimes with them. Accordingly, while we cannot definitely eradicate any residuary risk of introducing a new matter, we cannot but permit the submission of a new text to rectify an unclear description or recitation in the specification after we have exercised our due diligence to root away the potentiality of introducing therein a new matter.
Whenever an applicant tries to add some passages for better clarifying or supporting what it has claimed, those passages might or might not really include a new matter. No matter how objective an applicant will be or tries itself to be, there must be some subjective elements that might not be able to be fully eliminated. Especially, when there is a strong desire from the applicant to supplement some descriptions to better support the applicant has the rights to claim what it has claimed. There might be a hard time for either the applicant or an examiner to explain or determine that there does not have a new matter through that supplement. No matter how hard it might be, no matter what kinds of tactics or strategies the applicant might exercise therefor or no matter what kind of position the examiner will take, there must be a final solution or answer as to whether the supplemental passages are suitable or allowed although it seems no one can predict the outcome of the solution or answer.
The third time chance, i.e. when places for amendments are so numerous that it appears to anyone that a new text version for clarity and simplicity should be submitted. In this situation, it is believed that the above discussions still apply. Nevertheless, since amendments having been made are so numerous, the risks or considerations to the above effect will become more complicate or unforeseeable.
*If the filing version and the grant version are different, which version will govern in the enforcement stage?
It is easy for us to decide, for the claim part, that it must be the grant version which will govern in the enforcement stage as long as there is no new matter or the grant version has passed due substantive examination before the examiner.
For the description part in the specification, the situation might need a little more explanations. Specifically, if the grant version does not involve a new matter through the deliberate examination, the same logic in the preceding paragraph still applies, i.e. the grant version shall apply. On the contrary, if the grant version has been finally proved to introduce a new matter, the following considerations might arise:
1. Whether the initial filing version will automatically become the governing text version?
2. Who shall be responsible for the error of granting the grant version?
3. What can be inferred from the above responsibility or what role the grant version will play in this situation?
Since the grant version in respect of the descriptions involves a new matter and thus cannot serve as the bases for enforcement, or exactly speaking for helping interpret what the claim is really referred to, it might be natural for us to conclude that the filing version will automatically become such bases since there might already possibly be not any other version to this effect. Is such reasoning acceptable? Before affirming the above reasoning, we would like to reason further as follows:
1. Although the grant version involves a new matter, it does not mean the patent needs be cancelled since resorting to the filing version for interpretation of the claims in issue might have been a kind of punishment to the patentee and it is unreasonable to cancel a patent simply because the grant version might really have a new matter.
2. While the applicant would claim that it is the Patent Office that allows the new or grant version although proposed by the applicant, the Patent Office might assert that it is human that would err so that the most important thing is to make sure what the real invention or the appropriate protecting scope is rather than to ascertain who should be responsible for grant of the grant version since it would not help in the matter. Accordingly, the applicant cannot allege that since the grant version has been allowed by the authority, the applicant should have thus been accredited to the grant version. Further, to know who should be responsible for the fault of granting the grant version does not appear to help judge which version shall govern in construing the claims in issue.
3. Although the responsibility of such grant cannot be exclusively imposed on the applicant or the authority, the grant of granting the grant version has proven that there might be a grey area between the filing version and the grant version. Accordingly, although the grant version cannot govern in interpreting the claims, the grant version should be able to play some role in construing the protecting scope a patent in issue has.
*Will a different text in another country influence the interpretation of the version in a specific country?
In our daily life, we need to make judgment every now and then on every single thing no matter how small or trivial the thing is. Although a great decision-making ability might be effectively gained through the training of such repetitive judgments, some judgments in this article might not serve for this purpose, though they are minor as regards our daily life, since before we can make any single judgment for a relevant topic, we must have exercised a lot of efforts to render our logical judgment.
It appears having been common to find there are different texts of a very same invention or application in different countries. Before we step further, it appears better for us to define what the word ¡¥different¡¦ is meant here. Specifically, it might be possible that the word different is meant here as follows:
1. A first grant text for a specific invention in a first country protects an A scope while a second grant text for the same specific invention in a second country protects a B scope;
2. The second grant text is accorded with an A¡¦ scope; or
3. The second grant text can only afford to protect an a scope, in which the A scope is irrelevant to the B scope, the A scope contains the a scope and the A scope overlaps with the A¡¦ scope.
Although in this colorful and/or diversified world, no matter how ridiculous a matter might be, the matter might emerge nearby just around any a person nowadays, it would appear that Situation 1 is unworthy of our discussions here although it might be very interesting. Accordingly, we would like to discuss first the above-mentioned situation 3 where it would seem that the examiner in the second country has found out at least a relevant prior art which forces the applicant to narrow down what it has claimed in the claims in order to get a notice of allowance. If this is the case, it would mean that the reason why the applicant can seek patented in the first country with the A scope is merely an error because the A scope is obtained simply because the examiner in the first country cannot locate said at least relevant prior art capable of anticipating or making obvious of the allowed claims. Alternatively, another story would be that the applicant has encountered a very tough examiner in the second country so that the applicant has been unwillingly forced to narrow down the claims in order to seek patented the application. A further scenario would be, e.g. the applicant has a financial problem so that it cannot afford the expenses of making a vigorous or time- or cost-consuming battle with the examiner or authority. Under such case, every one might feel comfortable somehow about the difference between claims or protecting scopes in two or more countries so that we would like not to put more words here.
Under the Situation 2, the origin and conclusion might be somewhat similar to those of the Situation 3 above-described. Nevertheless, the scenario might be more complicate or interesting. Specifically, Situation 2 might originate from the facts that the applicant narrows down its claim scope to A in the first country in view of the first citation by the first examiner and that it further narrows down its claim scope to A¡¦ in the second country in view of the second citation by the second examiner in order to get its applications patented in respective countries. Here, there might be the following concerns:
1. Which citation(s) is (are) proper?
2. Who has the right to determine what the word ¡¥proper¡¦ is?
3. Is it natural that an invention is matured into patents of different scopes in different countries?
4. How will a first examiner in a first country interpret an action or decision from another examiner in a second country?
Since there are different citations in different countries, one might consider that there must be a specific citation which is the right one or is at least more correct. Under such thought, we need to deal with what meaning the word proper is meant. Although it is hard or tough to deal with this issue, we would like to shortly comment as follows:
1. Although whether proper is uneasy to be determined, we need to reason in convincing details before we can assert a citation is improper. Nevertheless, we might regard a citation proper after we find it is uneasy for us to prove a citation is improper;
2. Although the standards for determining whether proper might be average viewpoints of a skilled person, it is neither easy to find out or reason what kind of citation is proper nor easy to convince others what one thinks or considers is proper;
3. It might be unavoidable that a very same invention would be possibly matured into patents of different scopes in various countries so that we should live with this situation as long as such differences in scopes are minor and fall into tolerances of subjectively objective bifurcations of the human being;
4. It appears that to stick to one¡¦s own viewpoint is far easier than to admire and/or agree with others¡¦ so that it might not sound that strange if an examiner subjectively objectively regards or considers a citation, action or decision slightly different from another examiner in another country as long as such difference is so slight that one skilled in the art cannot demonstrate there is an apparent error therein. The situation will get worse if there is involved in a racial consciousness or patriotism.
*Is it necessary and/or desirable and/or possible to harmonize the world patent examination in various countries?
As the world is becoming more modernizing, the human being is consuming more resources. Although resources come or are presented in various tangible or visible articles for consumption, they normally originate underground. It is said the limited resources on earth are to afford all living creations so that resources should be consumed conservatively. Accordingly, if the would patent examination in various countries is harmonized, some resources might be saved. Certainly, if resources consumed in patent examination are merely manpower, the above reasoning might be wrong since costing manpower not only can reduce the jobless rate but also can direct examiners in examining patent applications rather than physically consuming other resources.
So far as the world patent examination harmonization is concerned, we would like to provide our opinions as follows:
1. Necessity: As is known, different citations will result in different actions of substantive examinations. As is known again, although the patent is not so public interests directed when compared to the trademark, the patent examination involves the image of a country and/or the competence of examiners of the specific country so that:
A. The Patent Law is not purely a private law;
B. The patent examination normally reflects the administrative quality or the power of the country;
C. Every interested person might lead an easier life if a harmonized examination result is always available for each application.
2. Desirability: Given that a harmonized examination might represent a stout examination result and a sound image for a specific country, it would appear that every one would like one¡¦s country to have such examination. Nevertheless, the following issues will ensue:
A. How can such a harmonized examination be obtained? Since the application has been filed with various countries and it appears that different citations and different subjectively objective actions in those countries are unavoidable, what kinds of mechanisms we can take in order to ensure there is a harmonized examination among all countries? Even if it is possible to find out such mechanisms, we might wonder why it is still necessary to perform a respective examination in every country because we can already predict there must be the same harmonized examination result then. Although international symposiums and multilateral discussions and talks can help promote such harmonized examination, it appears uneasy for us to figure out relevant mechanisms to this effect or to anticipate the harmonized examination will come true soon;
B. Who is (eligible) to prepare such harmonized examination? Even if a harmonized examination is possible, which would normally mean that a single substantive examination among various countries is necessary, which country shall have the responsibility to conduct such a harmonized examination or does every country have the rights to decline to proceed to do such harmonized examination?
3. Possibility: There is nothing impossible if people have unified their will. In this aspect, the factors deciding whether a harmonized examination is possible might involve:
A. Whether designing the relevant mechanisms is possible and/or worthwhile?
B. Whether most of countries in this world consider rights and obligations of examining patent applications before grant are alienable?
C. Whether any country can competently conduct a harmonized examination?
D. Whether the rules for determining who should be responsible for the harmonized examination are settled?
*Is it necessary and/or desirable and/or possible to unify the final claim text in various countries?
This topic is much related to the above one. In as much as the claim is the core of a patent application or the patent rights, perhaps, we need to add some more words in this respect.
Even if it is natural that there might be different citations in various countries since people are born to have different ideas or subjective viewpoints, a relatively unified claim text would be very probable if we could exercise some harmonizing mechanisms to this effect. Specifically, for examination harmonization, there might involve the following factors so far as the patent-related sectors are concerned:
1. Citation: Upon examining, the first thing is to determine what constitutes the prior art because the patent application must be allowed in theory if no relevant prior art anticipating or making obvious the application can be located;
2. Criteria for Novelty: It is relatively easy for resolving the novelty issue since it appears to have been internationally uniform that it requires anticipation of all claim elements in a specific patent application by only one single citation. In as much as this rule is relatively clear and easy to follow, this factor might not present much issue;
3. Criteria for Non-obviousness: It would appear that the core issues as to whether a unified final claim text is available are related to this factor. Specifically, various concerns regarding this factor includes:
A. Whether the relevancy of a prior art is concerning the non-obviousness of a specific patent application?
B. Whether the relevancy of a prior art can duly enlighten a combination of two or more prior arts?
C. Whether the combination of prior arts can duly enlighten one skilled in the art to conceive or create a specific invention?
*Is it necessary and/or desirable and/or possible to harmonize and/or unify the patent practices somehow, e.g. by initiating the requirements of Information Disclosure Statement?
In addition to the substantive aspect developed upon the substantive examination, we must commit that the Information Disclosure Statement (IDS) practice in the US is a great invention directed in the procedural aspect for procuring a better substantive examination result in the long run. Before we go further, we would like to make some remarks on IDS practice:
1. Although it is imperative for the submission of IDS in order that the relevant application can be legally granted, it does not appear that all US applications, especially those originating outside of the US, fully comply with this imperative although either the local patent attorney or the applicant has been duly notified of this duty. The reason for this includes that such compliance will generally mean there are service fees to be collected by the US and local patent attorneys.
2. Although 37 CFR¡±1.56 threatens that ¡§no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct¡¨, it reveals at least the following rooms:
A. The regulation uses the word ¡¥will¡¦ rather than the word ¡¥shall¡¦, it is unclear whether this means such regulation applies to the stage only before the application is granted as a patent. Our bases for such question are the relevant clause in the regulation that ¡¥the duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration.¡¦ Accordingly, after a patent is granted, there is no penalty for violation of this regulation.
B. This regulation can be violated only when fraud on the Office was practiced or attempted or the duty was violated through bad faith or intentional misconduct. Accordingly, if there is no fraud, bad faith or intentional misconduct, e.g. the duty is not complied with simply because the applicant is trapped in a temporary financial difficulty, this regulation might no more apply.
3. Such IDS submission imposes duty on the side of the applicant. Enlightened thereby, there are the following ways to arrive at the similar effects:
A. The Patent Office requires the applicant submit a list showing where the application has been filed. Since the Internet is well developed nowadays, each Patent Office might be able to consult how all other Patent Offices plan to cite for a specific application;
B. Without bothering the applicant, each Patent Office might try by itself to reach the effect in the preceding paragraph also through the aid of the Internet by means of, for example either the priority data or mutual assistance or monitoring of the patent filing.
4. Perhaps, the IDS requirements can be met better if the Patent Office allows a fee reduction if the IDS includes a closely relevant prior art. Further, it might be possible that we could, if trying hard, develop further measures just like IDS for achieving an even more harmonized examination result.
*For a foreign applicant who secures a filing date with a specification in a specific original language, is it required to submit for every amendment an amendment text in the original language?
According to the Guidelines, it appears that there is no necessity to submit the amendment text in the original language since everything will be decided in accordance with the Chinese text although there leaves no room for speculation that if there is a vague sentence in the Chinese text, it is natural and not prohibited that one will refer to the original text for exploration of the accurate or real meaning thereof. Nevertheless, the practice to this effect here in Taiwan is not uniform. Specifically, some examiners will require the submission of the amendment in the original language while others will not. Also, while some local attorneys will automatically submit the amendment text in the original language additionally, others will not. Local attorneys who submit the amendment in the original language might desire to anticipate that if there is confusion in the text some day in the future, the amendment text in the original language will help interpret what the invention really is although the laws and the Guidelines have expressed that the Chinese text is the sole base for interpretation of the rights or the limitations of a specific patent.
Although the local attorney will not decline to submit the amendment in the original language since this additional service would mean a kind of revenue, the neutral answer to this topic might be that although it is not required to submit the amendment in the original language, it is optional for the applicant to submit the amendment in the original language for the potential reference of all relevant parties in a possible future dispute.
Although it is merely optional for the submission of amendment in the original language, it might be suggestible to conduct such submission if the amendment in the original language has been ready or such submission will incur no new cost either to the applicant or the attorney.
*Which one of texts in the local language and the original language shall be based for examination or interpretation or determination of infringement in which opportunity?
Unless there is a wrong or improper translation, there would normally present no difference in any opportunity for us to deal with a patent (application) based on the local or original language. Nevertheless, as mentioned above, the laws or Guidelines have made it clear that a patent application shall be prosecuted by basing on the Chinese text. Accordingly, it would seem there has been no space for argument in this respect. Nevertheless, we would like to comment on this topic further as follows:
1. In the examination stage, the text in the original language might play some role in interpreting the invention whenever there is an unclear statement in the Chinese text and the applicant could redress such unclear statement by referring to the original text by asserting there is an inadvertent improper translation, which shall not be easily turned down in a civilized society since the human being is to unintentionally err now and then;
2. Even in the post-grant, reexamination or invalidation stages, the above recognition might still apply since all these stages are concerning whether there should exist a patent in view of the prior arts and whether there are differences between the patent in issue and the prior art. The patent is legal if there really are patentable differences therebetween since it might be easily imaginable that it might need the involvement of a new definition or restructuring efforts in order to distinguish a grantable patent over the prior art where as long as there requires a new definition or restructuring efforts, there will involve explanations or interpretations, which might unavoidably introduce the original text;
3. In the enforcement or infringement stage, the situation might differ in that:
A. All unclear issues should have been resolved in the above-mentioned stages so that it should have been clear as to what the protecting scope or the invention really is;
B. The all elements rule is considering whether all elements are present in an accused infringing article rather than exploring whether a specific structural difference can qualify as a non-obvious feature. Nevertheless, this distinction does not appear to play a significant weight since judging whether there appears an element could still involve how to define a specific term or phrase;
C. Since the patent has been put in the public record for optional inspection only in the local language unless specifically otherwise petitioning, it might not be so reasonable or convincing that the patentee could base on its original text to assert or claim something which is not so apparent solely from the text in the local language.
*What is the role the text in the original language should play in which opportunity, e.g. examination, infringement analysis or trial?
From the above discussions, it would seem that the most significant role of the original text is to define, delimit and/or disclose what an invention in a specific patent application is. Accordingly, if it were true that the local language text has already fully transcribed completely every details of the original text, the original text will play no more a role in any stages of examination, infringement analysis and trial. Thus, we would like to conclude this article as follows:
1. Examination stage: The original text could be made reference in order to determine what an invention or the real desired protecting scope in a specific patent application is.
2. Infringement analysis stage: Once a patent has been acquired, it normally has been certain what an invention or the real desired protecting scope is since it has been well bargained by both the applicant and the examiner so that any unclear points or obscurities shall have been resolved. Accordingly, unless there is a critical case, the original text shall not play any significant role.
3. Trial stage: It might interest the potential infringer to ascertain whether there is a significant translation error, whether the amendment has been made beyond the original disclosure, and/or whether the error and/or the amendment have driven the granted text in a state capable of being invalidated.
Claims We Have
1. It is a good practice from Taiwan IPO that the applicant can opt to prosecute an application with the amendment but need to accept a later filing date which is the date on which the amendment going beyond the original disclosure is submitted to the IPO without the necessity of a re-filing procedure or the like.
2. Since the inner priority system can only play some role like the CIP practice, we are still wondering why a lot of countries including ours have not adopted such a great system.
3. Although the time for submitting a newer text is not statutorily limited, the time for such submission should be reduced to the largest extent in order to unfailingly secure the filing date without much trouble.
4. While we cannot definitely eradicate any residuary risk of introducing a new matter where there is involved in a new text or a new inclusions of passages, we cannot but permit the submission of a new text to rectify an unclear description or recitation in the specification or of supplemental passages after we have exercised our due diligence to root away the potentiality of introducing therein a new matter under the law practices.
5. Although the responsibility of granting a grant version cannot be exclusively imposed on the applicant or the authority, the grant of granting the grant version has proven that there might be a grey area between the filing version and the grant version so that it might be reasonable for us to take while the grant version cannot govern in interpreting the claims, the grant version should be able to play some role in construing the protecting scope a patent in issue has.
6. Although the standards for determining whether there is a proper citation might be average viewpoints of a skilled person, it is neither easy to find out or reason what kind of citation is proper nor easy to convince others what one thinks or considers is proper.
7. It might be unavoidable that a very same invention would be possibly matured into patents of different scopes in various countries so that we should live with this situation as long as such differences in scopes are minor and fall into tolerances of subjectively objective bifurcations of the human being.
8. It appears that to stick to one¡¦s own viewpoint is far easier than to admire and/or agree with others¡¦ so that it might not sound that strange if an examiner subjectively objectively regards or considers a citation, action or decision slightly different from another examiner in another country as long as such difference is so slight that one skilled in the art cannot demonstrate there is an apparent error therein.
In the examination stage, the text in the original language might play some role in interpreting the invention whenever there is an unclear statement in the text in the language of the application-filed country and the applicant could redress such unclear statement by referring to the original text by asserting there is an inadvertent improper translation, which shall not be easily turned down in a civilized society since the human being is to unintentionally err now and then.