Field of Endeavor

The present article relates to amendments made to the patent specification or claims, and to what will or should happen following such amendments.

Background Statement

As is known, mistakes are easy to be made through various causes including those not easily imaginable.  Also, one of causes might be an unintentional inadvertence through which a disclosure might fail in clarity.  So far as the clarity is concerned, if the lack of clarity in the specification so reaches to the extent that the specification will be regarded as non-enabling, even if the lack in contents does not involve a great complexity or technical nature, the enabling requirement can still serve as a fatal attack to the patentability of invalidity of a specific patent (application).  Although the lack in clarity, which eventually results in the non-enablement, is so minor in technical nature, the unpatentability or invalidity of the involved patent (application) cannot be rescued.  From this single example, one might alert that amendment, revision or correction made to a patent (application) might involve a great deal of issues or details to be discussed, which is the reason why this article is brought up.

Summary of Developments

Taiwan has played an important role in the supply chain for the high-tech products although the patent sector does not play a comparable role till now even though people here do have filed many patent applications in the foreign countries, especially in the US where we always win a quite front place.  Although our patent practices succeed a lot from foreign countries, especially the US, Japan and the European Patent Office, we have our peculiar features or systems.  As an example, we dare to say that we have the most strange patent agent system all over the world.  Specifically, our Patent Attorney Act has been drafted for more than 10 years but has not yet successfully been enacted so that till now, our patent agents have the following sources:

1.      One who has passed the High Examination in the technical field to become a technician in that field.  Specifically, as long as one has a technician licence in a specific technical field, one can petition to have a patent agent licence through submission of a copy of the technician licence even without a training in patent practice;

2.      An attorney-at-law, even just passing the bar examination recently having been loosened to have a pass rate between 5% to 10% can petition to have a patent attorney licence even without a technical background, again even without a training in patent practice;

3.      A judge retired from the court without experiences or technological background can also obtain a patent attorney licence after he/she has petitioned to become an attorney-at-law;

4.      A patent examiner, after two years of examiner practices, can also petition to be granted a patent agent licence; and

5.      The most incredible person is an accountant who has nothing to do with the patent-related matters can surprisingly petition to automatically become a patent agent.

The above might have vividly shown that Taiwan has her peculiar features in the patent sector.  Although it is uncertain whether the above must represent a negative image, perhaps, we also have some positive aspects eventually.  We will derive in the following to see whether we have such positive attributes through discussions with reference to Guidelines of Patent Examination (hereinafter called Guidelines).

In the beginning of the section of Guidelines discussing supplement or amendment, Guidelines make mention that due to adoption of the first to file system, it should be permissible to allow the applicant to supplement or amend the specification or drawing in order that the invention in the patent application can be specifically and fully disclosed, since it can be anticipated that in order to secure the earliest filing date, the specification and drawing are to be submitted to the Patent Office in no time by the applicant as soon as the invention is completed so that it is possible that the specification or drawing might be in error, lack something or have unclear expressions.  Before we have any comments, we would like to mention that in traditional China, there are three criteria, namely case emotional proprietary, rationality and law which sequentially play the importance of roles in governing how righteousness, justice and/or proprietary for a specific case is to be decided.  Nowadays, the priority has been changed into the sequence of law, rationality and case emotional proprietary.  We would like to guess it might be possible in the future that the priority of these three criteria might again change into rationality, law and case emotional proprietary.  What we desire to express here is that the above sentence in boldface appears to show that our Intellectual Property Office (IPO) has so much an understanding mind to the applicant.  Nevertheless, it seems that the fact needs not go in this apparent way in that:

1.      In the past, we need to try so much efforts for so long a time before IPO will accept a reasonable suggestion or practice;

2.      Although Guidelines have made it clear that no new matter can be introduced in any kind of situation, the above sentence in boldface might have generously suggested that the IPO might be kind in dealing with such error, lack or unclearity.  Our IPO does be generous now and then, e.g. our IPO often allows the supplement of experimental data to support the enablement or reasonableness of an original broad claim, which might be regarded as introducing new matter in most of other countries;

3.      Nevertheless, the IPO cannot be too kind to allow significant rectification of error, lack or unclarity since it might somehow involve inappropriateness.  For example, if we agree that 95%, if we can quantify the extent, completeness is rectifiable, people will ask why 94% or 93% completeness is not rectifiable so that an easy life is no more possible.

As provided in Articles 49 (1), (2) & (3), unless required to supplement or amend specification or drawings by the Patent Office, the applicant may so effect within 15 months from the date of filing the invention patent application.  Thereafter, the applicant may so do only in the following various dates or periods:

1.      At the same time of petitioning substantive examination;

2.      Within three months after service of the notification that the application proceeds with substantive examination where the substantive examination is requested by one other than the applicant;

3.      Within the period of response to the pre-action notification of the patent-dedicated office;

4.      At the same time of requesting reexamination or within the period within which the reexamination briefs may be supplemented.

In view of the above limitations, it would appear that supplementation or amendment is not welcome or is restricted, which might explain or suggest that supplementation or amendment might potentially involve a prohibited inclusion of new matter.  Certainly, such limitation might originate from the consideration that the more the supplementation or amendment is submitted, the more complexity or efforts the examiner needs to exercise.  Nevertheless, it would appear that although supplementation or amendment might be attempted to correct some irregularities in the specification or drawings, it would be better for us to eradicate the necessity of such supplementation or amendment.

There are quite a few illustrations of examples to demonstrate what are or are not allowed for supplementation or amendment in the Guidelines.  Hereinafter, we will make further discussions with reference to some of them.

In Chapter 6, Section 1.1.4(3), Guidelines state that although the applicant can try to delete a certain technical feature from a claim if the entire invention technique can still be presented after deletion, in order to avoid the introduction of new matter through such deletion, such deletion can only be permitted only when one skilled in the pertinent art can directly and unambiguously recognize in view of the specification and drawings the following three conditions:

1.      The deleted technical feature is not interpreted to be compulsory;

2.      The deleted technical feature is not indispensable so far as the solution for the technical problem is concerned; and

3.      The deletion of such technical feature needs not be compensated by amending other features.

So far as the above Guidelines statements are concerned, we would like to comment as follows first to be later discussed in details:

1.      Although it is interesting to get known to the fact that deletion of a technical feature can constitute the introduction of a new matter, it does not appear Guidelines have made it clear whether our IPO has fully got the marrow to this effect and/or properly elaborated how to resolve relevant issues therein;

2.      It is unclear whether the determination as to whether the applicant can delete a certain technical feature from a claim can solely be based on the judgment if the entire invention technique can still be presented after deletion;

3.      Perhaps it is interesting to discuss when there is an introduction of new matter through a deletion;

4.      When a deleted technical feature can or could not be interpreted compulsory to the completion of an invention?

5.      When is a deleted technical feature interpreted as not indispensable so far as the solution for the technical problem is concerned?

6.      Is it reasonable to require that the deletion of such technical feature be not compensated by amending or incorporating other features?

In Chapter 6, Section 1.1.4(7), Guidelines state that if the deletion of a part overlapping with a prior art from a claim will introduce a new matter, or the subject matter remaining in the claim cannot be more particularly and concisely defined through a positive expression through the deletion of the overlapping part, a negative expression for disclaiming the part overlapping with the prior art can be introduced.  For example, if a claim is directed to a metaphysical, generic or superordinate technical feature and there are disclosed many corresponding selective specific or subordinate technical features, a specific one of which is a prior technique, it is permissible to delete the description of the specific prior technique in order to avoid overlapping with the prior art and to recite in the claim the metaphysical technical feature in a negative expression through amendment by excluding (e.g. using the terms, not including or excepting) the specific prior technique.  In addition, even if the specification does not disclose a technical feature belonging to the prior art, it is permissible to amend the claim in a negative expression excluding the prior technical feature where it will be exceptionally regarded as having not introduced a new matter although the amended claim recites a technical feature not disclosed in the original specification.

It is interesting to discuss whether the introduction of a prior technique not originally mentioned into the specification or claim will introduce a new matter.  On the one hand, if a technique relates to a prior art, it appears that the introduction of such prior technique into the specification needs not necessarily involve a new matter since a prior art is readily available to one skilled in the art normally.  On the other hand, it seems to be uncertain as to whether the introduction of a prior technique will never introduce a new matter since it would seem that any new invention is a combination of many prior elements, so that one may wonder whether the introduction or incorporation of a prior technique into an original disclosure will present a new invention or contribute to construct the non-obviousness of the initial creation.  Accordingly, it might be hard for us to determine or convince others:

1.      That the introduction of a prior art will introduce a new matter since what is introduced is merely a prior art; or

2.      That the introduction or a prior art will never introduce a new matter since what might be introduced might be not merely a prior art through incorporation or potentially synergistic combination.

Thus, this question does not have an easy answer as it appears.

Although it is easy to understand the meaning of the word, overlapping, it might not be so easy to identify an overlapping part with a prior art.  This is because although it is vividly clear that not only a claim must have a scope, but the prior art also presents a scope, it is uneasy to determine to what extent these two scopes overlap with each other although it might be not difficult to decide whether there is an overlap between these two scopes.  Furthermore, although the overlapping scopes when drawn in a sheet of paper can be easily separated from each other, it is uneasy to unlatch two intertwining scopes by deleting one or two elements from a specific scope since the deletion of one or two elements might collapse the involved scope or cause the involved scope becoming unpatentable.  Accordingly, not only the sentence ¡§if the deletion of a part overlapping with a prior art from a claim will introduce a new matter¡¨ involves a lot, but also the word, part, used in this sentence has not been particularly and/or distinctly defined.

In addition to the above, Guidelines generously offer that if the subject matter remaining in the claim cannot be more particularly and distinctly defined through a positive expression through the deletion of the overlapping part, a negative expression for disclaiming the part overlapping with the prior art can be introduced.  In this regard:

1.      It appears that Guidelines believe that there is a first situation that the new matter issue will be raised if one tries to overcome the overlapping issue through a simple deletion of the overlapping ¡¥part¡¦ in a claim and a second situation that the overlapping issue of the subject matter, which results in the patentability problem of the specific claim, can neither be overcome by the deletion of ¡¥the overlapping part¡¦, nor be cured by any kind of potential positive expression.  In either case, Guidelines allow the adoption of negative expression, i.e. defining a claim by excluding or disclaiming the part overlapping with the prior art.  As is known, the negative recitation is prohibited under the US practice.  If the prerequisite for such negative recitation is critically exceptional, it might be comparable to the product-by-process claim invented by the US, and thus we, Taiwan, might bring forth for this world a good practice, which will be dealt with in details later.

2.      ¡¥Eloquence is silver but silence is gold.¡¦  Our Guidelines might be more spectacular if they did not state too much.  Taking the example, i.e. if a disclosure has disclosed many corresponding selective specific technical features, a specific one of which is a prior technique, it is permissible to recite in the claim the generic technical feature in a negative expression through amendment by excluding the specific prior technique, Guidelines have made as an example, it might be possible that Guidelines fail to take it into consideration that it has been quite popularly recognized or is extremely very possible that a specific technique normally can knock down a generic technique without the possibility that the generic technique can somehow still be preserved for being patented.  Certainly, we hope this is not the right case.

3.      Although the additional statement, made by Guidelines that ¡K it is permissible to amend the claim in a negative expression excluding the prior technical feature where it will be exceptionally regarded as having not introduced a new matter although the amended claim recites a [prior] technical feature not disclosed in the original specification, has made the situation, as described in the preceding paragraph, worse, we will address further this calamity by discussions hereinafter.

Guidelines additionally provide that amendments in respect of changes between a generic concept and a specific concept are permissible sometimes.  For example, the following two situations are considered to be supplements or amendments in the disclosures belonging to the original specification or drawings in addition to the case that what are supplemented or amended have been specifically described in the original specification or drawings:

1.      Deleting some limitations defining the specific concept from claims: While resulting in being generically conceptualized in appearance, one could demonstrate that there is no technical significance through deletion of the limitation and it is apparent no new technical significance has been introduced through such deletion, or the deleted limitation is merely an optional addition so far as the specific concept is concerned; and

2.      After inspecting matters described in the original specification or drawings, e.g. through referring to manners for practice and problems to be solved by the invention, it is readily apparent for one skilled in the art that so far as supplemented or amended technical features in claims are concerned, inventions of the generic or specific concept defined therein are matters having been disclosed in the original specification or drawings.

Although the above theoretical expressions appear not wrong, we would like to comment as follows:

1.      It is clear that deleting some limitations defining the specific concept from claims will result in being generically conceptualized in appearance.  Nevertheless, it is not theoretically easy for one to demonstrate that there is no technical significance through deletion of the limitation and/or it is apparent no new technical significance has been introduced through such deletion since a negative phenomenon or scenario cannot be proven absolutely inexistent in a specific time point in advance.  By the same token, it is uneasy to prove the deleted limitation is merely an optional addition so far as the specific concept is concerned; and

2.      Even after carefully inspecting matters described in the original specification or drawings, e.g. through referring to manners for practice and problems to be solved by the invention, it might still not readily apparent for one skilled in the art that so far as supplemented or amended technical features in claims are concerned, inventions of the generic or specific concept defined therein are matters having been disclosed in the original specification or drawings.  This is because a winning party is nothing but one who can propose a more convincing argument at a specific time point, which might no more be true at another specific time point when the losing party can submit arguments more than those re-proposed by the previous winning party.

Guidelines further add that there are some supplements or amendments, which are not permissible and include:

1.      The technical feature added is a dimensional value measured from the drawings; and

2.      So far as an invention of chemical substance initially defined through physical or chemical properties is concerned, the applicant tries to supplement its chemical structure become known thereby at a later time.

To the above effects, we cannot readily understand the philosophy adopted by Guidelines since:

1.      In as much as the drawings are a part of the original disclosure, why the applicant cannot add or supplement a technical feature being a dimensional value directly measured therefrom.  Such prohibition looks like to deny the drawings are a part of the original disclosure; and

2.      As previously reasoned that it is possible that if after inspecting matters described in the original specification or drawings, it is readily apparent for one skilled in the art that so far as supplemented or amended technical features in claims are concerned, inventions of the generic or specific concept defined therein are matters having been disclosed in the original specification or drawings, we cannot agree with Guidelines that for an invention of chemical substance initially defined through physical or chemical properties, the applicant cannot try to supplement its chemical structure become known thereby at a later time since it is quite possible that through detailed descriptions of physical or chemical properties of the chemical invention, there is a possibility that the chemical structure can be thus determined although it is somehow unknown upon filing.

Finally, Guidelines list some items in Chapter 6, Section 1.7 to direct attentions from the examiners upon their effecting examination.  We will discuss only those which deserve our comments as follows:

1.      In ¡±1.7(4), Guidelines state ¡§where the filing is made with foreign specification and drawings and the Chinese text or drawings supplemented in the prescribed period happens to have missing page(s) or sheet(s) or element(s), if missing page(s), sheet(s) or element(s) can be located from contents disclosed in the foreign text, the applicant is permitted to supplement complete Chinese specification and/or drawings to have a filing date as the date of submitting the foreign text; by the same token, if missing page(s), sheet(s) or element(s) have been seen in contents disclosed in the prior application on which the priority claim is based, the applicant is permitted to supplement complete Chinese specification and/or drawings to have a filing date of the original filing date (Article 21 of the Patent Law Enforcement Rule.  Nevertheless, if the initially supplemented Chinese text is ab initio in lack of any one of invention title, invention description, abstract, claims and necessary drawings necessitated to be described, it no more relates to a case belonging to the above missing page(s), sheet(s) or element(s) so that if the prescribed period for supplementing the Chinese text has expired, the filing date will no longer be the original supplementing date but should be the date of having supplemented the necessitated matter or necessary drawings, even if the matter having not been described has been seen in the foreign text or the prior priority-claimed application and the complete Chinese text has been later re-supplemented.¡¨  With regard to these statements, we have the following comments:

A.     We fully agree with Guidelines that if missing page(s), sheet(s) or element(s) have been seen in contents disclosed in the prior priority-claimed application, the applicant is permitted to supplement the complete Chinese specification and/or drawings to have a filing date of the initial filing date of submitting the foreign text;

B.     Nevertheless, we cannot agree with Guidelines that if the initially supplemented Chinese text is ab initio in lack of any one of invention title, invention description, abstract, claims and necessary drawings necessitated to be described, the applicant cannot keep the initial filing date (hereinafter referred to as the First Date) or even cannot keep the original date (hereinafter referred to as the Second Date) of supplementing the Chinese text but will be forced to have a filing date (hereinafter referred to as a Third Date) of having supplemented the necessitated matter or necessary drawings, even if the matter having not been described has been seen in the foreign text or the prior priority-claimed application and the complete Chinese text has been later re-supplemented.  This is because:

a.       If the matter having not been described has been seen in the foreign text or the prior priority-claimed application and the complete Chinese text has been later re-supplemented, we cannot realize how and why the applicant cannot keep the First Date or the initial filing date, i.e. the date on which the applicant first submits the foreign text since we cannot distinguish this case from the situation A just reasoned or admitted by Guidelines above;

b.      We can agree with Guidelines that the applicant cannot keep the Second Date if the Chinese text it has supplemented lacks invention description or claims.  But we would not like to accept that the Second Date cannot be kept simply because any one of invention title, abstract and ¡¥necessary¡¦ drawings is missing since neither of title and abstract could be too important to fail the supplemented Chinese text in presenting the substantive contents or subject matter of the specific invention on the one hand while the ¡¥necessary¡¦ drawings in the Chinese text in fact is not ¡¥necessary¡¦ on the other hand since drawings in a foreign language has been submitted on the First Date so that what is outstanding is merely a translation thereof into Chinese, which cannot normally be so serious as to cause the presented Chinese text non-understandable, especially when most of people here have not bad foreign text-reading ability;

c.       Accordingly, we do not think it reasonable for Guidelines or our IPO to frequently adopt or force an applicant to accept the Third Date unless what are missing are invention description and/or claims.

2.      In ¡±1.7(10), Guidelines state ¡§if, while an applicant has submitted a supplemented or amended text, it does not make any comments or has kept silent where the supplemented or amended contents are to supplement or amend the original specification or drawings and the examiner cannot ascertain the corresponding relationship between the supplemented or amended contents and the original specification or drawings, the supplemented or amended contents can be regarded as having been made beyond the scope disclosed by the original specification or drawings.¡¨  We would like to fully agree with the position taken by Guidelines if there is a proviso, ¡¥provided that the applicant keeps ignorant on the official requirements to clarify where it is supplementing or amending or what the corresponding relationship is.¡¦

3.      In ¡±1.7(11), Guidelines state ¡§wherever an applicant submit multiple supplemented or amended specification or drawings, the last supplemented or amended texts shall be compared to the original specification or drawings for determining whether what are supplemented or amended go beyond the scope disclosed in the original specification or drawings.  Nevertheless, if the applicant has proposed multiple different supplementing or amending pages, they shall be examined one by one.¡¨  To this end, we have the following comments:

A.     Since the last text is used for comparison with the original one, it has been unimportant whether the preceding text(s) is (are) legal;

B.     It is believed that what are required to be examined one by one relate to those which are directed to supplement or amend different parts of the specification or drawings so that no further comment is necessary.

4.      In ¡±1.7(19), Guidelines state ¡§where an applicant submits a supplement or amendment after 15 months from the date of filing an invention patent (or from the date following the priority date if a priority is claimed, if not belonging to a supplementing or amending opportunity provided in Article 49(3) of the Patent Law), the patent dedicated office can notify the applicant its proposed reasons and facts for supplement or amendment will be considered upon examining the application.¡¨  In this respect, we have the following comments:

A.     As is known, there are following 4 opportunities for supplement or amendment after 15 months from the date of filing an invention patent, i.e. a) at the same time of petitioning substantive examination, b) within three months after service of the notification that the application proceeds with substantive examination where the substantive examination is requested by one other than the applicant, c) within the period of response to the pre-action notification of the patent-dedicated office, and d) at the same time of requesting reexamination or within the period within which the reexamination briefs may be supplemented.  Accordingly, the position taken by Guidelines appears fair and sound;

B.     Nevertheless, Guidelines might be more lenient, open-minded and wise if making it clear that the patent dedicated office will notify the applicant its proposed reasons and facts for supplement or amendment made beyond the statutory opportunities will be considered before the patent dedicated office completes examination of the application.

5.      In ¡±1.7(20), Guidelines state ¡§since a divisional or converted application of an invention patent application is applying the filing date of the original application (or the next date of the priority date if claiming the priority) as its filing date, the supplement or amendment for specification or drawings of the divisional or converted application shall not be entertained if made beyond 15 months after the filing date thereof.¡¨  As having been made clear in ¡±1.7(4) that Guidelines have stated ¡§where the filing is made with foreign specification and drawings and the Chinese text or drawings supplemented in the prescribed period happens to have missing page(s) or sheet(s) or element(s), if missing page(s), sheet(s) or element(s) can be located from contents disclosed in the foreign text, the applicant is permitted to supplement complete Chinese specification and/or drawings to have a filing date as the date of submitting the foreign text¡¨, we cannot understand why the same rule cannot be applied to the situation of the divisional or converted application.  It might be possible that this misunderstanding of Guidelines originates from the potential mistaken recognition that a divisional or converted application cannot have a supplemented or amended claim scope.

With the above discussions with respect to provisions in our country, we would like to deal with some issues we are concerning.

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