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.

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

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