Taiwan Revises Patent Examination Guidelines regarding parametric claims, invalidation procedures, and more

Date: 1 October 2021

On July 14, 2021, The Taiwan Intellectual Property Office (IPO) announced the revised Patent Examination Guidelines, which have been effective ever since. The new Examination Guidelines include revisions to Part II Chapter 6 Amendments, Part V Invalidations, as well as clarification of disclosure requirements, and correction of typographical errors and inconsistencies. We set out below the major changes and offer our suggestions on how to respond to them.

1. 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.

The example below illustrates this requirement:

(Description) “… recites that the viscosity of the pressure-sensitive adhesive composition ranges from 3,500 cP to 10,000 cP measured at room temperature; an embodiment recites 12,000 cP.”

Original claim Amended claim

A pressure-sensitive adhesive composition, comprising: a crosslinkable acrylic polymer… having a viscosity of 3,500 cP to 10,000 cP at room temperature.

A pressure-sensitive adhesive composition, comprising: a crosslinkable acrylic polymer… having a viscosity of 3,500 cP to 12,000 cP at room temperature.

Amending the range to 3,500 cP to 12,000 cP would be acceptable under the old Guidelines. However, under the new Guidelines, this would be considered as introducing new matter, since the range “10,000 cP to 12,000 cP” are not included in the description, claims, or drawings at the time of filing.

[How to respond]

In response to the revised Guidelines, 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.

2. Revising procedures of invalidation

[Content revised]

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.

[How to respond]

In light of the above, 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.

3. Regulating the language used in claims

  1. 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.
  2. 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.

4. Other minor changes

  1. 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”.

  2. Revising the eligibility of disclaimers:

    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”. This has already been announced on the IPO’s website in November 2020 and explained in our earlier Wisdom News Volume 31.

Wisdom Remarks

In conclusion, several chapters have undergone revision in the new Guidelines, and applicants should especially pay attention to regulations regarding amendment of parametric claims and the procedural changes to the invalidation process, and act in response.

 

 

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