Patent Amendments ©(Part II of II)

Brief Items to be Discussed for Presenting Issues We Concern

*Is it legal to allow the supplement of experimental data to support the enablement or reasonableness of an original broad claim?

*Is it legal to delete an element from an independent claim before and after its grant?

*Is it legal in the case that the deletion of an element from an independent claim must be accompanied by the adjustment of relationships of the remaining elements or incorporation of some other element(s) into the remaining ones?

*Shall the negative recitation be prohibited?

*Once published, does any subject matter which has not been put in the claims automatically go into the public domain?

*Revising opportunities

Detailed Analyses

*Is it legal to allow the supplement of experimental data to support the enablement or reasonableness of an original broad claim?

Taiwan is a lovely place in many aspects. In the past when the patent examiners outside of the Patent Office being not so familiar with the patent practices are curious about details of a specific application, s/he will ask particulars of the involved techniques and sometimes experimental data as well to be added into the text. In coping with this requirement, we always prick but console the examiner while we would like to so comply therewith, it is prohibited by the Patent Law. If confronting with a stubborn examiner, we will suggest the examiner to agree with the inclusion of experimental data, which are readily available from the applicant, in the response (e.g. in the remark or as an attachment thereof) rather than in the specification text. Although this formally meets with the requirements of the examiner, reflections in our mind always exist as follows:

1. The answer to the issue whether experimental data, regardless of being prepared before or after required by the examiner, belong to the introduction of a new matter when required to be supplemented into the specification or submitted as an attachment might be controversial in that while they might be inherent to the involved invention in nature on the one hand, they might be designed to broaden the coverage that which has been anticipated by either the original specification or the claims;

2. Firstly, it is possible that experimental data are merely provided to prove what the original specification or claims have disclosed or claimed are nothing more than a truth. In this connection, we cannot criticize in any way that the applicant tries to add any new matter. The problem in this aspect is that how we can prove to the satisfaction of others to the above effect;

3. Even though experimental data have been provided to prove that the original claim scope is practicable and reasonable and include those for embodiments never touched or thought of by the applicant, it might be not thoughtful if we arbitrarily declare such data provision must relate to the introduction of new matter since if the original claim scope has been made enough broad to cover what experimental data attempt to demonstrate, it might be possible that the gap between the original generic claim scope and the specific embodiment(s) introduced through experimental data is nothing more than those being obvious to the inventor(s) or one skilled in the art. Although we cannot demonstrate to so convince others, it is of the same difficulties for the opponents to illustrate to the contrary definitely, which might be the core issue in this respect;

4. It might be of no argument that if experimental data are provided to extend the original disclosure or the claim coverage, they should be regarded as having introduced a new matter.

While we cannot find a definite answer to the above, it might be interesting for us to consider or refer to the situation in connection with the provisional application practices. As is known, the provisional application is created for immediate protection of precious ideas. Specifically:

1. Generally, a patent is nothing more than an idea, which can normally be easily developed and implemented without undue experiments into a final product by one skilled in the art. Accordingly, if an idea has been really mature, the discrepancy between this idea and a perfect specification needs not necessarily be beyond measurable. Specifically, once the contents or substantive features have been clear, it is normally possible for a qualified patent attorney to prepare a competent specification including a skillful claim set.

2. Could we be enlightened somehow to propose our answers in view of the differences permitted between the provisional application and the regular one? Before we comment further thereon, it might be efficient for us to find out and discuss one by one what differences therebetween are, which might include:

A. Detailedness: It appears to be apparent that the regular one is normally more detailed in contents in respect of descriptions in the specification, in order to better support what is claiming in the appended claims, if the provisional one merely contains key substantive essence of an invention;

B. Claim Scope: Since the provisional one does not have a claim sometimes, it is natural that the regular one requiring the presentation of a claim will have a formal or better claim scope. The issue deserving to be discussed here might be whether the regular one has a claim scope broader than that which the provisional one deserves to be protected. It is believed that this is not a problem at all since if we take the provisional one as the initial disclosure to be submitted to a patent attorney for the preparation of a formal specification of the regular one, the issue will automatically be molten away;

C. Supplementation: The real issue here might reside in whether the regular one contains substantive subject matters broader or more than those in the provisional one since the new matter issue is the most critical and sensitive nature in a patent. Nevertheless, although the regular one can include therein a partial new matter beyond the provisional one, this will not cause a problem since while the regular one is entitled to the original filing date of the provisional one in respect of subject matter having been disclosed therein on the one hand, it will be accorded with a filing date of itself in respect of the partial new matter on the other hand.

3. Accordingly, we could find out that the provisional practices cannot be applied for reference to judge or support whether experimental data can be supplemented in a later stage since we will never accord a second filing date for the later supplemented experimental data to a patent application. As a result, the criteria disclosed in the beginning of this topic might be what we can have therefor.

It is believed that the inner priority system adopted in some countries is comparable to the provisional application practices in the US so that what we could be enlightened thereby in answering the above question in view of the inner priority system might have been discussed above.

*Is it legal to delete an element from an independent claim before and after its grant?

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 decision if the entire invention technique can still be presented after deletion. Under Taiwan practices, the examiners seem to be alert or sensitive if one intends to broaden a claim scope during the prosecution, but will not be that sensitive if we keep the original claim set but add another broad claim set with an explanation why and how this new broad claim set is supportable by the original disclosure. In contrast, it appears that the US practices will generously allow any kind of element deletion as long as the claim is operable and viable over the citation of the prior art. While it appears that the US practices are most reasonable and logic, there might exist a potential discrepancy between such practices and the ideal model by which we desire to denote the one that which every reasonable one finds it perfect.

The reason why the original claim scope is relatively specific is that the applicant (or the patent attorney, as a matter of fact) merely aims to protect that relatively specific scope originally. Further, the reason why the original claim scope is desired to be amended into one being relatively generic is that the applicant (again, normally the applicant here) realizes what it invents deserves more in a later stage. Combining these two reasons, we could feel unsettled that there might be a potential room accommodating therein a new matter issue since it is real or true that something never existing in the mind of the applicant or possibly the context of the original disclosure not only is to be brought into the claim but also might become a matured patent eventually.

To pacify our unsettled mind, it would appear that the best or sole way might be that we need to prove to our satisfaction how and why the original disclosure has fully suggested one skilled in the art or a competent patent attorney to draft the claim in the amended way.

Turning to another aspect of this topic: After post-grant publication, can we introduce any subject matter which is originally disclosed in the description into amended claims? A patent practitioner has well taken that what is not claimed will go into the public domain so that newly introducing an originally disclosed subject matter into a granted claim set might be equivalent to depriving the public of what they have enjoyed. In broad sense, there are two ways for broadening a claim scope, i.e. making a claim generic and adding another claim or claim set where the latter could be dependent or independent. For a dependent one, it might not cause much problem. The issue largely stays with broadening a claim scope or adding an independent claim. The issue might not be so serious if the new introduction of claim is desired to be made before the public realizes that they could have enjoyed something that an applicant fails to claim protection or has intentionally disclaimed. After the public realizes to this effect, it might be hard for the applicant to try to retrieve what it has failed to claim. The only powerful arms the applicant could grasp are that what it tries to do is to merely win back what it originally deserves to enjoy. These arms, however, are not so powerful or are actually weak when presented before the public domain theory.

The troubles as to how to compromise between the alleged powerful arms of the applicant and the public domain theory might be solved by ascertaining what the nature is to enlarge the claim scope under 35 USC 251 reissue provision within two years from the grant of the original patent. In as much as a patent is devised to encourage the creation of an invention to solicit happiness for the human being and it is true that such invention comes from the applicant, it appears that the applicant deserves a reasonable additional protection whenever possible although the public, especially those who trust what an invention is seeking to protect is exactly what is recited in the claims that the law is stipulated to make it clear, might in some sense lose what they have reaped through the failure of the applicant to duly claim what it later desires to seek protected.

To solve this issue, it might be helpful for us to discuss the following four issues. The first one would be: when the deletion of an element will introduce a new matter? It is true that a new matter issue is developed normally through the addition of a new element, a paragraph or technical contents. In a case where an element is to be deleted, although an applicant does not add in appearance anything new, the reasons how and why the invention can be presented in a sub-combination to be equally creative, especially how and why a combination of lesser elements can equally play the function of the original combination of more elements might involve a new concept causing the relational rearrangement of original elements or the necessity of incorporation of some other elements, which thus might present a new matter.

The next issue might be: when can or could a deleted technical feature not be interpreted compulsory to the completion of an invention? Although there is a paradox here because if a technical feature can be deleted, it must mean the deleted feature is somehow not compulsory, it appears that we can discuss this issue from the following two aspects:

1. A combination being in lack of the deleted feature can still play the full function of the originally intended combination. In this case, it might be possible for us to categorize further into two types:

I) With rearrangement: If the deleted feature ensues a rearrangement of the remainders of the original combination, one might agree with that whether there is introduced a new matter depends on whether one skilled in the art can anticipate such rearrangement;

II) Without rearrangement: If the deleted feature costs no rearrangement of remainders of the original combination for the combination deprived of the deleted element to work at a desired way, it might be possible that it is purely careless for the patent attorney or the applicant to include the deleted feature into the combination of the original independent claim.

2. The combination in lack of the deleted feature cannot play the intended full function of the original combination without incorporation of some other elements into the remaining ones. In this case, it might be possible for us to categorize further into two types:

I) Incorporation of elements not mentioned in the specification: It is believed that the most will believe there will be a new matter problem here;

II) Incorporation of elements disclosed in the specification: It is believed that we can treat this type as the one mentioned in 1.I).

The following issue might also be considerable: when will a deleted technical feature be interpreted as not indispensable so far as the solution for the technical problem is concerned? Although this one is somewhat related to the preceding one, it differs therefrom in that if the primary or main function or solution of the original combination has been achieved by the feature-deleted combination, we might treat this issue exactly in the same way as the preceding one so that we have expanded the application thereof. Accordingly, it is no more necessary for us to worry or require whether the deletion of such technical feature be not compensated by amending or incorporating other features?

*Shall the negative recitation be prohibited?

It would appear every applicant or claim drafter would like to use negative recitation if it is legal since it will make it possible to claim the largest scope by merely excluding what is impossible to be protected. Before going further, it might be interesting and necessary for us to briefly discuss differences between positive recitation and negative recitation. While it is merely necessary for us to exclude what has been held as the prior art from an intended claim in the negative recitation, for a positive recitation, we need to positively recite what is regarded creative and how what is recited inventively describes as a whole an operable subject matter where a skillful and experienced claim drafter would know that no matter how much efforts s/he has exercised in drafting a positive recitation claim, the theoretical protecting scope of the positive recitation claim will always fall short of that of a negative recitation claim.

Shall we ban the use of the negative recitation simply because it will accord the applicant a broader protection? We will try to imagine the reasons why a positive recitation rather than a negative recitation is popular nowadays as follows:

1. The most important one should be that the invention will never get clear as to what it is merely through a negative recitation as to what the invention is not;

2. The ensuing question might be: Is it possible one skilled in the art can clearly get known to what the invention is although the claim is recited in a negative manner? It might become possible to this effect if only one of many elements in a claim is recited in a negative manner. Nevertheless, it still suffers from uncertainty to some extent as to what the invention really is. Under these thoughts, it might become somehow apparent the critical exception for such negative recitation is at the opportunity whenever there is a case that one skilled in the art can definitely realize what a claim containing a negative recitation is claiming. With such a critical exception, it might be comparable to the product-by-process claim invented by the US, and thus be acceptable by international patent practitioners.

It is interesting to learn that the Board of Appeal of the EPO admitted that the introduction of disclaimers had been allowed in the past in exceptional situations in order to make a claimed subject-matter novel by delimiting it against an accidental anticipation (see e.g. T170/87, T608/96; T863/96, T318/98, and T4/80). However, it decided that the introduction of a disclaimer would not comply with the principles of legal certainty, consistency in the assessment of priority right, novelty and inventive step. According to the Board, an added feature (such as a disclaimer) can substantially change the definition of the technical problem to be solved by the application and therefore has an impact on its solution. Thus, a disclaimer is not merely the exclusion of a part of the original disclosure from the scope of protection but indeed may provide a technical contribution to the claimed subject-matter. This technical contribution would, however, change the invention, possibly to Ą§another invention.Ą¨ Thus, the admission of a disclaimer is not in line with the principles of G2/98.

Accordingly, we would like to eventually comment on the following paragraph in our Guidelines Ą§that ĄK 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 specificationĄ¨ as follows:

1. Although we might agree that 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 as long as the above rule that there is a case that one skilled in the art can definitely realize what a claim containing a negative recitation is claiming is followed;

2. We, however, cannot agree that the amended claim can recite therein a technical feature not disclosed in the original specification although the technical feature is a prior art since it is possible that the incorporation of a prior art might constitute an inventive creation.

*Once published, does any subject matter which has not been put in the claims automatically go into the public domain?

It is natural or automatic that if a subject matter disclosed in the original specification is not put in the claims, the subject matter will go into the public domain after the patent containing the claims without the subject matter has bee patented. Although this theory is very clear and easy to be understood, there remain some issues in this theory. The first issue we would like to study is: whether a subject matter which is disclosed but not claimed in an application having been subject to an earlier publication, i.e. 18 months after the filing date can restore the rights the applicant is originally entitled to claim to put the subject matter in the claims in the prosecution stage? We would like to analyze this issue from the following three aspects:

1. Unconscious State referred to a status that no one has consciously known to the existence of such an application: In such state, since no one will get harmed or limited in any way, we would like to assert that the applicant owns the intact right to recall the subject matter in the claims in the prosecution stage;

2. Realized State referred to a status that there is someone who has realized there exists a patent disclosing but not claiming a subject matter: In this state, what might be limited or harmed is that the intention or plan of said someone having so realized to take the legal advantage of freely enjoying the subject matter can no more come true. It would appear comfortable for us to take that to protect the rights of the applicant can easily outweigh to protect the intention or plan of said someone;

3. Practiced State referred to a status that there is someone who has been prepared to or has engaged in making, selling or using the subject matter based on the belief that its engagement in exploiting the subject matter will never get accused of infringement on a patent: In this state, although the applicant always has the potential rights to recover what it ought to be originally entitled to, we can realize easily that the rights of said someone will be harmed somehow if we determine that the applicant can recover the protection of the subject matter and that as soon as the applicant seeks to restore the possibility of protecting the subject matter, said someone shall interrupt the exploitation of the subject matter immediately. Even confronting with such dilemma, we would like to be calm and somehow ignorant so as to stay on the side of the applicant since said someone should know on the one hand that the application has not completed its prosecution so that said someone shall keep fully alert what its final claim text would be, and would only be responsible on the second hand for the action after the claim has been granted.

The situation will become tougher when it involves post-grant publication or when the patent is granted. This is because the critical point, i.e. the time when the patent is issued might tip our sympathy away from the applicant in that once the patent is issued, one might feel like to assume that the applicant has satisfied what it has secured. In this regard, we would like to further that:

1. While the applicant can assert that the issuance of a patent does not mean it has fully satisfied what it has secured since everyone cannot exactly ascertain whether s/he has perfectly done what s/he is assumed to do and no one can negate that the subject matter is brought to this world by it, the applicant cannot escape from the liability to be somehow responsible for what it has eventually secured under its express consent;

2. If there is a case that the issued claim scope is in the way it is at least partly because the applicant has not tried more efforts to secure a broader scope, the liability or the disadvantage-attributablility of the applicant would be increased;

3. From the above two aspects, it might be safer again for us to take that the two-year limit for broadening the claims in 35 USC 251 might be a good compromise. Certainly, 35 USC 252 has set out valuable rules to deal with effects resulting from the reissue, i.e. when a third party or the patentee will/can find or exempt from infringing.

*Revising opportunities

Please find contents of Article 49 of ROC Patent Law from our website, from which we can know:

1. The patent-dedicate office may ex officio notify at any time the applicant to supplement or amend specification or drawings;

2. The applicant may supplement or amend specification or drawings within 15 months from the date of filing the invention patent application;

3. Supplement or amendment under this article shall not be made beyond the scope disclosed by the original specification or drawings upon filing; and

4. The period in this article shall count from the following date of the priority date where priority is claimed.

In addition, after 15 months from the filing date of an invention patent application, the applicant may supplement or amend specification or drawings only in the following various dates or periods:

1. At the same time of petitioning the 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 Office;

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

After knowing the provisions of opportunities for supplement or amendment, we would like to discuss or find out: what is the rationale on which we base to require the revision shall be made by which time? As is known, in this economic or efficient era, everyone must or is forced to keep oneĄŚs pace fast enough in order to get rid of a trouble probably resulting from otherwise. Specifically, the applicant might want to secure a patent as soon as possible in order to enforce its rights earlier, the Patent Office intends to end the prosecution of an application earlier in order to show a statistics of good accounts and the examiner desires to complete the examination of the application sooner so as to win a potential meritorious appreciation from the Commissioner of the Patent Office, all of which appear having cooperatively explained how and why the opportunities for supplement and/or amendment are to be limited. After realizing the above, there remains another issue: whether the Patent Office or the examiner shall entertain and consider the supplement and/or amendment submitted at an opportunity other than those provided in the article? As discussed above in Guidelines Ąą1.7(19) where an applicant submits a supplement or amendmentĄK not belonging to a supplementing or amending opportunity provided in Article 49(3) of the Patent Law, the proposed reasons and facts for supplement or amendment will be considered upon examining the application, we trust our Guidelines are sound and wonderful in this aspect and hope every country is or could be the same.

Claims We Have

1. It might be hard for us to determine or convince others that the introduction of a prior art will introduce a new matter since what is introduced is merely a prior art, or 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 so that the question as to whether the introduction of a prior technique not originally mentioned into the specification or claim will introduce a new matter does not have an easy answer as it appears.

2. The answer to the issue whether experimental data, regardless of being prepared before or after required by the examiner, belong to the introduction of a new matter when required to be supplemented into the specification or submitted as an attachment might be controversial in that while they might be inherent to the involved invention in nature on the one hand, they might be designed to broaden the coverage that which has been anticipated by either the original specification or the claims.

4. Combining the reasons why the original claim scope is relatively specific and why the original claim scope is desired to be amended into one being relatively generic, we could feel unsettled that there might be a potential room accommodating therein a new matter issue since it is real or true that something never existing in the mind of the applicant or possibly the context of the original disclosure not only is to be brought into the claim but also might become a matured patent eventually.

5. Upon trying to introduce an originally disclosed subject matter into a granted claim set, the only powerful arms the applicant could grasp are that what it tries to do is to merely win back what it originally deserves to enjoy, while these arms, however, are not so powerful or are actually weak when presented before the public domain theory.

6. In as much as a patent is devised to encourage the creation of an invention to solicit happiness for the human being and it is true that such invention comes from the applicant, it appears that the applicant deserves a reasonable additional protection whenever possible although the public, especially those who trust what an invention is seeking to protect is exactly what is recited in the claims that the law is stipulated to make it clear, might in some sense lose what they have reaped through the failure of the applicant to duly claim what it later desires to seek protected.

7. While it is merely necessary for us to exclude what has been held as the prior art from an intended claim in the negative recitation, for a positive recitation, we need to positively recite what is regarded creative and how what is recited inventively describes as a whole an operable subject matter where a skillful and experienced claim drafter would know that no matter how much efforts s/he has exercised in drafting a positive recitation claim, the theoretical protecting scope of the positive recitation claim will always fall short of that of a negative recitation claim.

8. The critical exception for a negative recitation is at an opportunity whenever there is a case that one skilled in the art can definitely realize what a claim containing a negative recitation is claiming.

9. While the applicant can assert that the issuance of a patent does not mean it has fully satisfied what it has secured since everyone cannot exactly ascertain whether s/he has perfectly done what s/he is assumed to do and no one can negate that the subject matter is brought to this world by it, the applicant cannot escape from the liability to be somehow responsible for what it has eventually secured under its express consent.

The applicant might want to secure a patent as soon as possible in order to enforce its rights earlier, the Patent Office intends to end the prosecution of an application earlier in order to show a statistics of good accounts and the examiner desires to complete the examination of the application sooner so as to win a potential meritorious appreciation from the Commissioner of the Patent Office, all of which appear having cooperatively explained how and why the opportunities for supplement and/or amendment are to be limited.

Ą@