It might be necessary to conduct amendment, during prosecution of a patent application, in order to distinguish the claimed invention from the cited art. However, under the practice, no amendment is allowed to introduce new matter.
After filing an invention patent application, the applicant conducted an amendment by incorporating into the Claims a portion of the content of a prior patent whose patent number was mentioned in the Specification. While the purpose of such amendment was to distinguish the claimed invention from the prior art references cited by the Examiner, the applicant averred that the amendment had full support from a definition appearing in the specification of the prior patent. Given that the patent number was mentioned in the specification of the application and that the content introduced is within the knowledge of a person skilled in the art, no new matter was claimed to be introduced. However, the IP Office rejected the application on the grounds that the amendment is not supported by the Specification, Claims or Drawings of the application.
Not being satisfied with the IP Office’s rejection, the applicant filed an appeal, and in turn, a petition for administrative litigation with the IP and Commercial Court.
The IP Court dismissed the petition for administrative litigation for the following reasons:
It is stated in the patent examination guidelines that "[w]hen quoting a published technical paper, consideration should be given to how and to which extent the content of the technical paper should be disclosed. If a person with ordinary skill in the art to which the invention belongs cannot realize and put to practice the invention without reading the content of the paper, the paper should be disclosed in an exhausted manner; referring the paper by title only is not sufficient.” The examination guidelines further state that it is not permissible to add to the Specification filed at the time of filing the content of a prior patent for the purpose of remedying the deficiency of disclosure of a claimed invention. It is otherwise only if the amendment relates to the strengthening of the disclosure of the prior patent, which does not have anything to do with the technical features of the claimed invention.
According to the Specification of the application at issue, the claimed invention was contrived to solve the problem existing in the prior art, such as the prior patent whose number was mentioned in the specification. The content of the portion of the prior patent was added, by conducting an amendment, to highlight the technical features of invention over the prior art. As the content of the portion of the prior patent is not directly and unambiguously derivable from the application as filed, the amendment, if allowed, will broaden the scope of the Claims to go beyond the disclosure of the Specification. Such amendment is obviously not allowed under the examination guidelines. Therefore, the Decision rendered by the IP Office cannot be deemed improper.
In the above case, the Specification of the patent application at issue mentioned the patent number of a prior patent, but a portion of the content of the patent was inserted into the Claims as a technical feature of the invention during the examination process. Such amendment was deemed not supported by the Specification filed at the time of filing, even if the content of the amendment can be obtained with further reference to the publicly accessible prior patent.
The applicant is advised to laid out, when preparing the specification prior to filing, the significant portion of the content of the Specification of a relevant prior patent, in lieu of mentioning its patent number or title only.