Strategies in response to the new Patent Examination Guidelines in Taiwan

Date: 14 October 2021

【Volume 61】The Taiwan Patent Examination Guidelines were revised and announced on July 14, 2021, and the major revisions include Part II Chapter 6 Amendments, Part V Invalidations, as well as clarification of disclosure requirements. From now on, patentees shall be careful that the invalidation procedures are different from the past, and that there are now more limitations to the amendment of claims. We set out the revised regulations below and offer our strategies.

The major changes include:

  1. Revising the eligibility of disclaimers:

    According to the old Guidelines, undisclosed disclaimers are allowed in amendments or post-grant amendments if “it is used to disclaim technical content that overlaps with prior art” and “deleting the overlapping content renders the resulting subject-matter unable to be defined more clearly and concisely by expressing with positive features.”

    However, as the IPO found that there seem to be a superfluous use of undisclosed disclaimers in amendments or post-grant amendments of claims compared to the U.S., Japan and European countries, the new Guidelines provided that disclaimers are limited to overcoming references that prove a lack of novelty, lack of fictitious novelty, or non-compliance with the first-to-file principle, or inventions that involve “human beings”.

  2. Limiting the amendment of parametric claims

    The old Examination Guidelines allowed revisions to parametric claims in amendments so long as the new range is a combination of values disclosed in the description or embodiments. The new Guidelines are much more restrictive in this respect: not only do the amended parametric endpoints need to be disclosed in the description, claims, or drawings as filed, but the amended value ranges must also be included in the those disclosed in the description, claims, or drawings as filed.

    For example, if the specification as filed recites that the viscosity of a pressure-sensitive adhesive composition ranges from 3,500 cP to 10,000 cP measured at room temperature, as well as another embodiment reciting 12,000 cP, and the original claim recites “A pressure-sensitive adhesive composition, comprising: a crosslinkable acrylic polymer… having a viscosity of 3,500 cP to 10,000 cP at room temperature.” Patentees can no longer amend the range in the claim from “3,500 cP to 10,000 cP” to “3,500 cP to 12,000 cP” since that under the new Guidelines, the range “10,000 cP to 12,000 cP” are not included in the description, claims, or drawings at the time of filing, and therefore this amendment would be considered as introducing new matter.

  3. Revising procedures of invalidation regarding revoked decision of invalidation remanded to the IPO

    In administrative proceedings of an invalidation action, the court may accept new evidence provided by the invalidation petitioner and reverse the decision made by the IPO, and order that the IPO re-examine the case based on the court’s opinion. In this case, the old and new Guidelines have completely different provisions as to whether the IPO shall notify both parties to submit a response or allow the patentee a chance to amend his claims.

    According to the old Guidelines, the IPO shall notify the patentee to file a response during re-examination, and the patentee is also allowed to file amendments.

    In order to expedite the whole invalidation process, however, the new Guidelines provide that since both parties have sufficiently exchanged their arguments during the administrative proceeding, the IPO is not required to notify them to file another round of responses unless the court deems that there is fact or evidence yet to be clarified or requires reinvestigation.

  4. Revising the definition of a selection invention:

    The old Guidelines define a selection invention as a “purposeful” selection of certain elements or groups from a known and larger group or range of prior art. The new Guidelines have deleted the term “purposeful”.

  5. Regulating the language used in claims

    a. An independent claim including the transitional phrases “characterized in that”, “wherein the improvement comprises” or other similar phrases is not necessarily a two-part claim. Prior to the revised Guidelines, examiners often reject a claim on the grounds that “the claim is unclear as the preamble of the two-part independent claim does not recite the essential technical features it shares with prior art.” The revised Guidelines have clarified the interpretation of claims, and provide that under the above circumstance, the phrases “characterized in that “, “wherein the improvement comprises” or other similar phrases used in an independent claim is equivalent to “wherein”, and should not be deemed unclear.

    b. The subject matter of an independent claim should be clear and not too broad or simplified. Terms such as “an apparatus” or “a method” are examples of an unclear description of the subject matter.

Wisdom Strategies

  1. First of all, from now on, in Taiwan it is no longer acceptable to amend claims in amendments or post-grant amendments with disclaimers in addressing the problem of obviousness.

    On the other hand, the examination criteria on a negative limitation to a claim in major intellectual property office also differs. For example, the USPTO does not allow an undisclosed disclaimer in amendments, while the EPO allows an undisclosed disclaimer in the following cases:

    i. restoring novelty over a disclosure under Art. 54(3);

    ii. restoring novelty over an accidental anticipation under Art. 54(2);

    iii. removing subject-matter which is excluded from patentability for non-technical reasons.

    In order to develop a successful international patent portfolio, patentees should not only bear in mind the new judging criteria published by IPO, but also take notice of different regulations in different countries.

  2. In response to the revised regulation regarding the amendment of parametric claims, it is advisable to set broader or several different value ranges, and include the broadest range with the endpoints in the embodiments with words while drafting the specification, so that there is room for claim amendments later down the line.
  3. In response to the revised procedures of invalidation, we suggest that patentees actively file a response, amendment, or even request an interview with the IPO during re-examination. Invalidation petitioners, on the other hand, should review the files regularly and monitor the progress of examination, so as to timely file supplemental arguments when the patentee files an amendment or a response.




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