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Written By: Chi-Che Tung, Esq.

Formosan Brothers

Taipei, Taiwan

In the battle field of patent litigation, the amendments of issued patent claims often decide the outcome of the litigation. On the one hand, patent owners must amend the claims to the extent permitted by the Patent Act, so as to maintain the validity of the patent. On the other hand, the said patent owners must take into consideration of whether the allegedly in-fringing products would still fall within the scope of the amended patent claims, so as to achieve the objective of patent enforcement. Therefore, during the course of litigation, patent owners are often required to carefully assess whether amendments should be made and whether the amendments are flexible enough in order to maintain patent validity while keeping the claims broad enough to protect the inventions. However, patent amend-ments are closely connected to the public interests, as explained in the footnotes of the Consolidated Patent Act edited by the Taiwan Intellectual Property Office: “If patent owners are allowed to amend the specifications or drawings at will, so as to expand and alter the scope of patent protection that patent owners are entitled to, such behavior will necessarily affect the public interests and breach the fairness and justice of the patent regime. Therefore, there must be certain restrictions imposed on the proposed amendments of the specifications or drawings.” Therefore, there are strict standards and restrictions regarding whether an application for amendment will be granted or rejected.

According to Article 64 of the current Patent Act, the restrictions imposed on the amendment to a patent include: 1. The application for amendment must include one of the three permissible causes for amend-ment prescribed under Article 64 Paragraph 1; 2. The amendment shall not exceed the scope of contents disclosed in the original specification or drawings when the patent application was first filed; 3. The amendment shall not substantially expand or alter the scope of the patent claims. In particular, the third criterion that restricts an amendment from substan-tially expanding or altering the scope of the patent claims is often the key to whether an application for amendment will be granted. Based on the ad-ministrative judgments rendered by the Taiwan Intellectual Property Court in 2010, it can be observed that there are approximately 75% of the cases in which an application for amendment of an issued patent is rejected on the basis that such amendment sought to substantially expand or alter the scope of the patent claims. In the case where the amendment is thought to have expanded or altered the scope of the patent claims, most of the time, the issue arises when the applicants tried to include “additional-element type” technical features of a dependent claim under an independent claim, as a result of which, the other dependent claims of the said independent claim have been substantially altered. For example, in the case of the judgment 99-Xing-Zhuan-Su No. 2 (year 2010), the patent owner had incorporated claims 7 and 9, which are dependent on the independent claim 1, into claim 1 and there are other claims in the said patent (claims 3 to 5 and claims 12 to 15), which are directly or indirectly dependent on the independent claim 1, all of which are dependent claims with additional elements. In the end, the court held that: “… Claims 3 to 5 and claims 12 to 15 of the amended patent claims have, in addition to adding technical features under independent claim 1 of the original patent, further included dependent technical features. As such, claims 3 to 5 and claims 14 to 17 of the original patent claims have been substantially altered as a result of the amendments made to the heat dissipation unit…” This judgment demonstrates an actual case whereby the other dependent claims of an independent claim were substantially altered as a result of the patent amendment.

Moreover, the Taiwan Intellectual Property Office has amended the relevant provisions on patent amendment under Part 2 Chapter 6 of the Patent Examination Guidelines, which came into force on May 1, 2011. The key amendments include:

1. To loosen the standards of review in respect to the permissible causes of the application for patent amendments;
2. To loosen the standard of determining whether the patent amendment has substantially alter the patent claims;
3. To include examples as illustration.

Amongst the amended provisions, the second and third points of the amendments are expected to have a larger impact on the practice of patent prosecution. The main changes to the Patent Examination Guidelines are to loosen the restrictions imposed on the introduction of technical features to further define the technical features under the patent claims prior to the patent amendment (e.g. In respect to component A, to further define that component A includes components a1+a2, i.e. further-description type of technical features). If such further definition does not alter the problem that the invention sought to resolve prior to the patent amendment, the patent claims will not be considered to have been substantially altered. Moreover, the amended Patent Examination Guidelines provides examples of situation where the introduction of an additional technical feature in the specifica-tions or the original patent claims after amendment would otherwise result in substantial alteration.

Based on the foregoing changes in the patent practice and the amendments to the Patent Examination Guidelines, in terms of drafting specifications and patent claims, we would recommend the followings: 1. If a particular additional-element type technical feature may be patentable, it is recommended that such technical feature be included as a dependent claim. If such technical feature is not included in the patent claims and only ap-pears in the specifications, such technical feature might not be allowed to be included in the amended patent claims. 2. Since when a dependent claim with additional-element type technical feature, when being incorporated under an independent claim, may result in substantial alteration of other dependent claims with additional-element type technical features, we recommend that the relationship between the patent claims be arranged in advance so as to reduce the possibility of such substantial alteration. For example: If two dependent claims are both considered as including addi-tional-element type technical features, and the those additional-element type technical features of the two dependent claims may be composite or co-existent, the applicant may consider filing multiple dependent claims. 3. The applicant may consider incorporating the dependent claims with addi-tional-element type technical features under different sets of independent claims with different subject matter as dependent claims with fur-ther-description type of technical features. 4. The applicant should ensure that the technical features of the dependent claims shall be in line with the purpose of the invention. 5. Regardless of the type of dependent claims (i.e. further-description type of technical features or addition-element type of technical features), when incorporating such dependent claims into the independent claims during the patent amendment, the patent owner should assess whether the combination of such claims with the other dependent technical features is supported by the specification. Therefore, when drafting the specification, it is recommended to include various different embodiments that demonstrate as much potential combination of technical features as possible.

Mr. Chi-Che Tung, obtained his Master of Intellectual Property from Franklin Pierce Law Center (US), MS from National Taiwan University (Taiwan), and BS from National Taiwan University (Taiwan). Mr. Tung has vast experiences in patent prosecution, patent search, infringement analysis, invalidation, and litigation in many technical fields. These technical fields include mechanical, electromechanical, electrical, software, communication, construction, and civil engineering. In addition to Taiwan, Mr. Tung also specializes in patent prosecution of China, the United States, Japan, Europe, and PCT. E-mail:

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