【Volume 57】Although Chinese is the official language for patent prosecution in both Taiwan and China, the two jurisdictions differ greatly in their regulations regarding post-grant amendments. Both IP Offices have relaxed their determination on the legality of post-grant amendments each in its revised Patent Examination Guidelines (2017)ⁱ.

In this two-part deep dive, we compare and analyze how Taiwan and China treat post-grant amendments and offer our insight to how applicants should go about patent prosecution in these jurisdictions. The first part focuses on the regulations, specifically when post-grant amendment is available and its eligible forms.

Time for filing post-grant amendments

Taiwan

Taiwan allows for more flexible times to file post-grant amendments than China, as shown in the following graphs:

(1) Patents with no pending invalidation action and proceeding ⁱⁱ

Once a patent is granted with no pending invalidation action and proceeding, post-grant amendment may be requested at any time.

(2) Patents with pending invalidation action ⁱⁱⁱ

i. During invalidation trial, post-grant amendment may only be requested in the following timeslots:

(A) Specified period for filing a response

(B) Specified period for filing a supplementary response (when the invalidation petitioner provides supplemental arguments)

*(C) Specified period for filing a response after receiving IPO’s grounds for rejection of amendment

ii. During administrative proceeding

If the invalidation petitioner produces new evidence, post-grant amendment may be made to the claims that have not received a revocation decision.

(3) Patents with pending civil infringement proceeding

Post-grant amendment may be requested at any time for patents with pending civil infringement proceeding.

China:

In China, post-grant amendments are only possible during invalidation actions^iv:

Moreover, the eligible forms of post-grant amendments vary across different times during the invalidation action.

Subject, forms, and restrictions regarding Post-grant Amendments

Taiwan:

Although there are different times at which post-grant amendments are available depending on whether there are invalidation actions or civil infringement suits associated, the subject, eligible forms and restrictions regarding post-grant amendments are consistent^v:

The 2017 edition of the “Patent Examination Guidelines for Post-Grant Amendments” provides that if the additional technical features in the claim(s) could not fulfil the purpose of invention before amending the claim, then it is considered as substantially altering the scope of the claim(s).

Therefore, on the assumption that “including additional technical features in the claim(s) for post-grant amendments” can achieve the purpose of invention before amending the claim(s), this shall not constitute as substantially altering the scope of the claim(s) and the amendments will be approved.

China:

As opposed to Taiwan, China only allows post-grant amendments be made to “claims” and not other parts of the specification. As for the eligible forms, China has been taking a more lenient approach since 2017, where aside from deletion of claims and technical features, it also allows a further limitation of claims and correction of obvious errors^vi.

As stated above, China only allows post-grant amendments be filed during invalidation actions. Further, the eligible forms of post-grant amendments also differ at points of time:

“Further limitation of claims” shall meet the following two requirements:

1. Amending the claim by adding one or more technical features recited in the other claims;
2. The amended claim shall result in a narrowed scope of protection.

These two requirements must be met to establish a “further limitation”. Therefore, it is not allowed to amend the claim by adding content from the description.