Part II – Exploring Differences between Taiwan and China’s Post-Grant Amendment Systems and Suggested Strategies

Date: 17 September 2021

Previously, we covered Taiwan and China’s regulations on post-grant amendment, providing applicants and patentees a detailed guide as to when and how amendment may be filed after grant. In this second part, we continue to look at three exemplary cases in the two jurisdictions and break down the reasons. Finally, we comment on the recent developments and offer suggestions for those seeking to secure patents in both Taiwan and China.

Comparison of Post-Grant Amendment in Taiwan and China

It is apparently much more difficult to tackle post-grant amendments in China, where it is demanded that the amended claim must include clearly recited content from other claims. The following examples are given to better illustrate the difference between the two jurisdictions:

(1) If at the time of filing, the specification has clearly disclosed the specific concept of a particular element:

  1. [Claim] A process for preparing a tertiary amine by reaction of a secondary amine with an aldehyde compound in the presence of hydrosilane and an organic acid, wherein the reaction temperatures range from 50 to 100°C.
  2. [Post-grant amended claim] A process for preparing a tertiary amine by reaction of a secondary amine with an aldehyde compound in the presence of hydrosilane and methanoic acid, wherein the reaction temperatures range from 50 to 100°C.
  3. [Description] …the present invention provides an efficient process for the preparation of tertiary amines from secondary amines and aldehyde compounds. The process involves reaction of a secondary amine with an aldehyde compound using hydrosilane in the presence of a Lewis acid, wherein the Lewis acid may be an organic acid, for example, methanoic acid
  Taiwan China

Result

Acceptable

Unacceptable

Reasons

The amended claim substitutes “organic acid” with “methanoic acid,” a more specific concept of the former that is disclosed in the description, which is considered as to narrow down the scope of the claim.

The other claims do not recite “methanoic acid” prior to the amendment; therefore, it does not constitute further limitation of the claim.

 

(2) Introducing technical features in the description or drawings that are not specific concepts to the claims:

  1. [Claim] A wheelchair, which provides the pedal (20) pivoted on the wheelchair (10), where the pedal (20) is a set of two, and the two sides of the pedal (20) are an engagement portion (21) and a pivot portion (22) respectively, where the pivot portion (22) is pivoted on the wheelchair and the engagement portion of two pedals (20) are engaged.
  2. [Post-grant amended claim] A wheelchair, which provides the pedal (20) pivoted on the wheelchair (10), where the pedal (20) is a set of two, and the two sides of the pedal (20) are an engagement portion (21) and a pivot portion (22) respectively, where the pivot portion (22) is pivoted on the wheelchair and the engagement portion of two pedals (20) are engaged; the wheelchair armrests are installed with a pivotable and telescopic dining table (30).
  3. [Description] The purpose of this creation is to provide a wheelchair…, wherein pedals (20) are pivoted on the wheelchair (10), and the pedals (20) can be engaged so as to prevent the rider's feet from sliding, and to provide ample space for placing the feet. … A pivotable and telescopic dining table (30) is attached to the armrests of the wheelchair (10) for placing items, and enables the rider to dine, write, or accomplish other tasks.
  Taiwan China

Result

Acceptable

Unacceptable

Reasons

The amendment does not change the invention purpose of preventing the rider’s feet from sliding and providing ample space for the feet. It has not substantially enlarged or altered the claims as published at grant.

The other claims do not recite “dining table (30)” prior to the amendment, and the amendment also does not result in a smaller scope of protection. Therefore, it does not constitute further limitation of the claim.

 

(3) Amending with disclaimers/negative limitations:

  1. [Claim] A metal plate detergent, characterized in that the main component is an inorganic salt containing sodium ions as cations.
  2. [Post-grant amended claim] A metal plate detergent, characterized in that the main component is an inorganic salt containing sodium ions as cations (where the anions are not CO32-).
  3. The cited invention discloses a metal plate detergent that contains an inorganic salt consisting of sodium ions as cations and CO32- as anions.
  Taiwan China

Result

Acceptable

Unacceptable

Reasons

Exceptionally deemed as not introducing new matter.However, this form of disclaimer only applies in excluding parts overlapping with a single prior art, or ineligible subjects of patents.

The other claims do not recite any relevant technical features prior to the amendment. Therefore, it does not constitute further limitation of the claim.

 

Wisdom Suggested Strategies

In Taiwan, the offensive and defensive strategies for the patentee and the invalidation petitioner/accused infringer aim at: “What is the purpose of invention of that claim?” and “Can all purposes of invention of a particular claim before amendment be achieved after amendment?” As for how the purpose of invention should be defined, the IPO emphasized that the specification is not an absolute standard during examination. However currently, the specification still plays a significant role in the actual practice of post-grant amendments. When the patentee tries to distinguish the purposes of invention of the patent with prior art by responding to Office Actions or invalidations, these will apparently be treated as internal evidence and will substantially affect the IPO’s judgement of “purposes of invention”. Therefore, the patentee should consider the pros and cons carefully when drafting the specification or responding to any Office Actions.

China, on the opposite, has a more stringent policy for post-grant amendments, particularly in that it exclusively allows claims and not the description to be amended, and prohibits restricting the claims with content from the description, which is allowed in Taiwan. In view of this, one could consider putting the details of the embodiments in some of the claims when filing patent applications in China.

Note, however, that even though there seem to be tough regulations in the Examination Guidelines, Chinese courts have gradually relaxed their judgements in recent decisions, especially those involving parametric claims. In a 2017 decision (Jing Xing Zhong No. 4464 (2017)), the original claim 1 recites “the maximum profile size (2) of the outer side of the speaker (3) is greater than or equal to 300 mm, and smaller than or equal to 1500 mm.” The court held that amending it to “smaller than 1500 mm” is acceptable since the value is clearly disclosed in the claims and description, and the amended parameters have not extended beyond the scope of the original claims. In addition, in a 2019 decision (Zui Gao Fa Zhi Xing Zhong No. 19 (2019)), the judge further explained that “In invalidation actions, restrictions regarding how claims could be amended shall focus on keeping the amended claim within the disclosure of the original claims and description, and not expanding the original scope of protection. In order to both facilitate the examination process and protect the patentee’s contribution, requirements for amendments shall not be so restrictive that they end up being a sort of punishment for inappropriate claim drafting.”

In conclusion, we should be able to expect a further relaxation on post-grant amendments in China. At the moment, however, one should adjust their strategy according to each jurisdiction to secure the desired scope of protection.

 

 

Keywords: Patents  Taiwan  China

 

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