Under the Patent Examination Guidelines issued by the Taiwan Intellectual Property Office (TIPO), if claim amendments are not drafted in compliance with the rules of the Patent Act or a request from an examiner, the claim amendments might not be considered to be the basis for examination. Meanwhile, examiners are obliged to exercise due diligence in discovering applicants’ intention in claim amendments which are drafted in an unconventional manner.
Recently, the Intellectual Property and Commercial Court (the IPC Court) rendered a decision on this issue.
The procedural history of the patent application in dispute is as follows:
As shown in the above chart, there are three versions of claim amendments at issue in this case. They are:
- The amendments submitted on February 4, 2020 which were drafted in compliance with formality requirements;
- The amendments submitted on May 18, 2021 which were drafted out of the norm of the formality requirement; and
- The amendments submitted with the Appeal Brief filed on July 2, 2021.
Thus, the main procedural dispute is: which of the three versions of claim amendments should be examined, considering the facts that (a) TIPO withdrew the second and final Office Action issued on May 28, 2021, and (b) after the withdrawal, the applicant made no response to the official letter issued on August 4, 2021.
The Board of Appeals, sided with the TIPO, found that the amendments filed on February 4, 2020 should be deemed as the basis for examination and consequently the application should be rejected. The later amendment attempts should not be considered, because the applicant did not file any response to the Official Letter that TIPO issued on August 4, 2021, and the claim amendments of May 18, 2021 were not drafted in compliance with the formality requirements.
Not being satisfied with the Decision of the Board of Appeals, the applicant appealed it to the IPC Court.
Firstly, the IPC Court held that, according to the Administrative Procedure Law, TIPO, as a competent authority, should exercise due diligence in looking into the favorable as well as unfavorable factors in an application. Under this rule, although some of the claim amendments at issue were not drafted in compliance with the formality requirement, the examiner should not have simply deemed them to be null and void. Given the ex officio withdrawal of the Office Action, the examiner should have subsequently confirmed with the applicant about their true intention regarding how they wish the claims to be amended.
Secondly, finding that TIPO took no action to look into the applicant’s intention, the IPC Court held that the version of the claims that the applicant truly intended to retain is the one the applicant submitted when they appealed to the Board of Appeals. Notwithstanding this, as this version of the claims failed to meet the patentability requirements, such as the susceptibility of industrial application, the Court dismissed this administrative litigation.
We can get two teachings from this Judgment:
- The procedural history of this application concerned was exceptionally complicated, mainly because the applicant did not appoint a patent attorney to prosecute the application on his behalf. Layperson applicants may have difficulty noticing formal errors in their submitted documents, and it can be challenging to amend claims to meet formality requirements, especially when the prosecution becomes complicated. By working with a patent attorney, these mistakes can be prevented or minimized.
- If an applicant submits multiple versions of claim amendments at different times and the amendments do not all meet the formality requirements, examiners should ask for clarification from the applicant to confirm which claims they want to be examined.