Taiwan: More flexibility on post-grant amendments
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Taiwan: More flexibility on post-grant amendments

According to Article 67 of the Patent Law, post-grant amendments are permissible only if they are conducted to (1) delete claims; (2) restrict the scope of claims; (3) correct misstatements and mistranslations; or (4) clarify uncertainties. In general, such post-grant amendments shall not go beyond the disclosure of the specification, claims and drawings as originally filed. Nor shall they substantially broaden or alter the scope of the claims.

Recently, Taiwan's IP Office has relaxed the guideline on determining what constitutes substantial alteration to granted claims. Under the old guideline, only when a post-grant amendment was to amend the granted claims by adding additional features which are in a strict and narrow genus-species relationship with at least one of the original granted claims would it be accepted. Starting January 1 2017, a post-grant claim amendment shall not be regarded as having introduced substantial alteration provided that the original object of the claimed invention remains achievable.

In view of the relaxation of the examination guideline, a patent owner's request to amend granted claims by including additional features may become allowable. To be more specific, adding a technical feature of an embodiment disclosed in the original specification into a granted claim, an amendment hardly permissible in the past is now possible so long as the same invention object can still be achieved. For instance, for a granted claim reciting the features of a pedal of a wheelchair, it is now acceptable to add the features relating to a swivel table disclosed in the specification as originally filed as a limitation to the said claim since the addition does not alter the object of the claimed invention.

A post-grant amendment shall be acceptable if it does not in any way alter or impair the original object of the claimed invention. In order that patent owners seeking post-grant amendments can make better preparations, it is worth observing how examiners will put into practice the new guideline during examination.

wu.jpg

Jun-yan Wu


Saint Island International Patent & Law Offices7th Floor, No. 248, Section 3Nanking East RoadTaipei 105-45, Taiwan, ROCTel: +886 2 2775 1823Fax: +886 2 2731 6377siiplo@mail.saint-island.com.twwww.saint-island.com.tw

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article