Revision to Examination Guidelines for Amendments of Granted Patent is now in effect

In order to resolve the controversies arising from examination of amendment for granted patent, the Examination Guidelines for Amendments of Granted Patent is revised to clarify related provisions. The revision is made with reference to other international regulations and court rulings from Taiwan. The revised Examination Guidelines underwent two public hearings, separately on February 16 and February 23, 2011. The new Examination Guidelines goes into effect on May 1, 2011.

Major points to the revision are:
1. Relaxing the guideline on amendment matters
For amendments requested on a two-part form, the current Examination Guidelines only allows the portion technical features of a characterizing portion to be amended in the preamble on the ground that they are an explanation of obscure description(s). The revision maintains the aforementioned provision, but also relaxes it to include: a) amend the two-part form to combination form; or b) amend the combination form to two-part form; or c) when the portion technical features in the preamble of a two-part form are amended in the characterizing portion, they are deemed explanation of obscure description(s) and not having substantially enlarged or altered the scope of the patent claims.

2. Relaxing the guideline for substantially altering the scope of the patent claims
Under the current Examination Guidelines, technical features of a description or the drawings of an invention that are introduced in the amendment of the scope of the patent claims are only allowed when the amendment introduces the specific technical features (such as formic acid) of the technical features (such as organic acid) prior to the amendment request. Any other amendments would constitute substantial alteration to the scope of claim. The revised Examination Guidelines relaxes this limitation, allowing technical features in the claim that are further defined (such as component A is consisted of a1 & a2) prior to amendment would not constitute substantial alteration to the scope of claim, provided the claimed invention’s field of industrial applicability and problems to be solved are not altered. Also, the current Examination Guidelines does not allow claims presented in means-plus-function or step-plus-function language to be amended to structure, material or acts thereof corresponding to the functions disclosed in the description of an invention. The revised Examination Guidelines relaxes this provision, the aforementioned amendment would not result in substantial alteration of claim scope.

3. Increasing explanations of sample cases
Adding and deleting some of the sample cases (including cases from confirmed court rulings) and recompiling the cases in the following order: a) decisions on amendment matters, b) decisions on specification or drawings that are beyond the scope of disclosure, and c) decisions on claims that are substantially enlarged or altered. Part ‘c’ is subdivided into two scenarios: 1) deleting independent claim and amending dependent claim to independent claim, and 2) introducing technical features of specification or drawings into claim scope.

From:TIPO