IP Court Tightens Rules on Amending Markush Claims
Date: 14 June, 2024
【Volume 137】
Where the specification has described that a chemical group may be selected form various chemical components, the amendment to a Markush claim by limiting the chemical group to include specific components of the multiple components described in the specification should be narrowing down the scope of the claim. However, recently in a liquid crystal composition invalidation case, the Taiwan Intellectual Property Office (TIPO), the Taiwan Intellectual Property and Commercial Court (IP court), and the Supreme Court clarified that without detailed explanation or specific examples for the amended compositions in the specification, a person of ordinary skill in the art cannot directly and unambiguously deduce from the specification that the chemical group described in claims “definitely contain” those specific components. In the case, it ended up that the post-grant amendment was considered to extend beyond the scope of the specification and the claims as filed, and shall not be acceptable.
Case facts
A Taiwan Invention Patent No. I452122 “LIQUID CRYSTAL COMPOSITION” (the ‘122 patent) is owned by a Japanese company (the patentee and plaintiff). A German company (invalidation requester) filed an invalidation action toward the ‘122 patent, claiming that the ‘122 patent is lack of novelty, inventiveness, and clarity. After that, the patentee filed post-grant amendments for 7 times to amend the claims of the ‘122 patent.
However, the TIPO considered that the amendment filed by the patentee has introduced new matter, and therefore shall not be acceptable. The TIPO then determined the ‘122 patent invalid. The patentee was dissatisfied and filed the subsequent administrative litigations after the administrative appeal was dismissed. However, the IP court and the Supreme Court both rendered a decision to affirm the original decision, holding that the post-grant amendment is unallowable (2020 Xing Zhuan Su Zi No. 41, 2022 Shang Zi No. 491 of the Supreme Court)
Post-grant amendment of Claim 9 of the ‘122 patent
The ‘122 patent provides a liquid crystal composition and a liquid crystal display device using that. The patentee specifically listed all the technical features cited from the liquid crystal composition of Claim 1 as granted into the liquid crystal display device of Claim 9, and further defined general formula (I), (II-1) in the 7th post-grant amendment.
Accordingly, in the 7th post-grant amendment, the liquid crystal display device of Claim 9 was characterized by containing 30 to 50% by mass of a compound represented by general formula (I):
(in the formula, R1 and R2 each independently represent an alkyl group having 1 to 8 carbon atoms, an alkenyl group having 2 to 8 carbon atoms, an alkoxy group having 1 to 8 carbon atoms, or an alkenyloxy group having 2 to 8 carbon atoms, and A represents a 1,4-phenylene group or a trans-1,4-cyclohexylene group);
containing 5 to 20% by mass of a compound represented by general formula (II-1):
(in the formula, R3 represents an alkyl group having 1 to 8 carbon atoms, or an alkoxy group having 1 to 8 carbon atoms, and R4 represents an alkyl group having 1 to 8 carbon atoms, or an alkoxy group having 1 to 8 carbon atoms)… , in terms of the general formula (I), containing a compound represented by general formula (Ia) (in the formula, R1a and R2a each independently represent an alkyl group having 2 or 3 carbon atoms)
(general formula (Ia) described in the specification of the ‘122 patent) , in terms of the general formula (II-1), containing a compound represented by general formula (II-1a) (in the formula, R3a represents an alkyl group having 3 carbon atoms and R4a represents an alkyl group having 2 carbon atoms).
(general formula (II-1a) described in the specification of the ‘122 patent)
The patentee argued that the amendment of these two technical features above were based on:
(1) The description that “specifically, preferred examples of compounds represented by the general formula (I) are compounds represented by general formula (Ia) to general formula (Ik) below” disclosed at Line 7 of Page 11 of the specification of the ‘122 patent, and “in the general formula (I), R1 and R2 each independently…even more preferably represent an alkyl group having 2 to 3 carbon atoms” disclosed at the last line 1 of Page 9 to Line 8 of Page 10;
(2) The description that “specifically, preferred examples of compounds represented by the general formula (II-1) are compounds represented by general formula (II-1a) and general formula (II-1b) below…in the general formula (II-1a), R3 is preferably the same examples as those in the general formula (II-1). R4a is…particularly preferably an alkyl group having 2 carbon atoms” disclosed at the last line 4 of Page 12 to Line 9 of Page 13 of the specification of the ‘122 patent and “in the general formula (II-1), R3 represents…particularly preferably an alkyl group having 3 carbon atoms” disclosed Paragraph 2 of Page 12.
The opinions of the IP court and the Supreme court
The IP court and the Supreme court both considered that the post-grant amendment of the ‘122 patent above has introduced new matter, with the following reasons:
(1) Since the description that “specifically, preferred examples of compounds represented by the general formula (I) are compounds represented by general formula (Ia) to general formula (Ik) below” disclosed in Page 11 of the specification of the ‘122 patent listed different aspects of the general formula (I), a person of ordinary skill in the art may have multiple different choices for different technical needs. However, the amended Claim 9 described a liquid crystal composition, “in terms of the general formula (I), ‘containing’ a compound represented by general formula (Ia)”. The term “containing” is an open-end conjunction and means containing compounds of general formula (I) other than compounds of general formula (Ia) which was not disclosed in the claim. However, the specification of the ‘122 patent did not specifically disclose the technical content about the liquid crystal composition which, “in terms of the general formula (I), definitely contain a compound represented by general formula (Ia)”. Also, a person of ordinary skill in the art cannot directly and unambiguously deduce the technical feature of “in terms of the general formula (I), ‘definitely’ containing a compound represented by general formula (Ia)” in the amended Claim 9 above from the description that “the liquid crystal composition of the present invention contains 30% to 50% of a compound represented by general formula (I)”, but only that preferred examples of compounds of the general formula (I) are compounds of general formula (Ia) to general formula (Ik) in multiple aspects according to Page 11 of the specification of the ‘122 patent.
(2) Similarly, a person of ordinary skill in the art cannot directly and unambiguously deduce the technical feature of “in terms of the general formula (II-1), definitely ‘containing’ a compound represented by general formula (II-1a)” in the amended Claim 9.
(3) In addition, the patentee argued that, in another patent (TWI433910, Exhibit 7), the patentee thereof amended the claim 1 to further limit the claimed liquid crystal medium to comprise CC-3-V compound and one or two of CCY-3-03 compound and CY-4-02 compound, which was accepted by the TIPO, and therefore the present application should be accepted likewise. However, the court held that the amendment in the case of Exhibit 7 had been specifically disclosed by the patent specification in Page 12 to 31 with the preferred examples which may comprise CC-3-V compound and one or two of CCY-3-03 compound and CY-4-02 compound. Therefore, the amendment of the Exhibit 7 was acceptable in patent examination.
It is noted that the TIPO and the courts judged the legality of post-grant amendment by a stricter standard in this case.
In this case, regarding the chemical groups described in the claims, the patentee tried to limit the chemical groups in the claims to contain specific components based on the components options for each chemical groups described in the specification. In terms of limiting to specific components, the post-grant amendment filed by the patentee narrowed down the scope of claims. In this perspective, it seemed that the post-grant amendment did not violate the stipulation of Article 67 of the Taiwan Patent Act1.
However, since that there was no detailed explanation or specific examples for the amended compositions in the specification of the ‘122 patent, despite that this post-grant amendment narrowed down the scope of claims of the ‘122 patent as granted, the courts still determined that a person of ordinary skill in the art cannot directly and unambiguously deduce the specific combinations of specific features based on the specification of the ‘122 patent as filed. Therefore, the post-grant amendment extended beyond the disclosure of the ‘122 patent as filed and therefore shall not be acceptable.
Furthermore, although this case deals an issue on post-grant amendment, amendment during application proceedings cannot extend beyond the disclosure of the application as filed likewise. Thus, whether an amendment in the same way as this case would be not acceptable in application proceedings is in practice remains to be observed in the future. However, in response to these opinions in practice, the applicants are suggested to describe specific combinations of specific components with the terms “preferably”, “more preferably” when drafting the specification. In this way, it more likely to successfully limit Markush group to specific components based on these preferably aspects in the subsequent amendment or post-grant amendment proceedings.
[1]Article 67 of the Taiwan Patent Act: The patentee filing a request for amending the description, claim(s) or drawing(s) of a granted invention patent shall only conduct the following:
1. to delete claim(s);
2. to narrow down the scope of claim(s);
3. to correct errors or translation errors; and
4. to clarify ambiguous statement(s).
Except for correction of translation errors, a post-grant amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed. For a patent application for invention filed by submitting the description, claim(s), and drawing(s) in a foreign language pursuant to Paragraph 3 of Article 25, the correction of translation errors shall not extend beyond the scope of content disclosed in the original foreign language documents as filed. An post-grant amendment shall not substantially enlarge or alter the scope of the claim(s) as published.
