APAA e-Newsletter (Issue No. 30, August 2022)

Amendments to Patent Examination Guideline Regarding Disclaimer

Stephen J.W. Cheng, Louis International Patent Office (Taiwan)

Taiwan Intellectual Property Office (TIPO) announced a revised Patent Examination Guideline on June 27, 2022, which became effective on July 1, 2022.  In the revised Patent Examination Guideline, regulations regarding disclaimer described in Chapter 6 “Amendment” and Chapter 9 “Post-Grant Amendment” of Volume II “Substantive Examination of Invention Patent,” as well as some descriptions in several other chapters, were amended.

The amendments to the Patent Examination Guideline regarding disclaimer are as follows.

According to Chapter 6 “Amendment” of Volume II in the previous Patent Examination Guideline, an amendment for excluding a technical feature not directly and unambiguously derivable from the disclosure of the application as filed (from now on referred to as “undisclosed disclaimer”) is allowed only in any of the following circumstances:

  1. the undisclosed disclaimer is to overcome the lack of novelty;
  2. the undisclosed disclaimer is to overcome the lack of fictitious novelty (i.e., the lack of novelty with respect to earlier filed but later published Taiwan applications);
  3. the undisclosed disclaimer is to overcome the noncompliance with the first-to-file principle, provided that the application does not have the same filing date with the cited references;
  4. the undisclosed disclaimer is to exclude “human beings” from claims.

However, the previous Patent Examination Guideline did not mention whether an undisclosed disclaimer by a voluntary amendment filed prior to any examination results being received should be allowed.  Suppose the relevant regulations described in the previous Patent Examination Guideline are interpreted strictly.  In that case, such an undisclosed disclaimer should not be allowed because such an undisclosed disclaimer is not for addressing the rejection grounds of being lack of novelty, being lack of fictitious novelty, or not complying with the first-to-file principle, and therefore the above-described circumstances 1, 2 and 3 are not met.

Still, there are many demands of filing a voluntary amendment with an undisclosed disclaimer before receiving any examination results.  For example, when an applicant files a PPH (Patent Examination Highway) request with TIPO, it is usually required to concurrently amend the claims to conform to the granted claims of a corresponding foreign application based on which the PPH is requested.  If the applicant is not allowed to file a voluntary amendment with an undisclosed disclaimer, the applicant may not be able to file the PPH request successfully.

In order to meet the growing demands from applicants, Chapter 6 “Amendment” of Volume II in the revised Patent Examination Guideline added another circumstance where an undisclosed disclaimer in amendments is allowed:

  1. the undisclosed disclaimer is to exclude a technical feature overlapping with a prior art prior to any examination results being received (Note: For this circumstance, it is required to submit the prior art together with a statement in which the reasons why the introduction of undisclosed disclaimer is necessary are specified).

Introducing the above-described circumstance 5 to the Patent Examination Guideline is believed to bring more flexibility to the formulation of patent filing strategies.

Moreover, in Chapter 9, “Post-Grant Amendment” of Volume II in the previous Patent Examination Guideline, undisclosed disclaimers were allowed without the restrictions of being in certain circumstances like those described in Chapter 6 “Amendment.”  In order to make the regulations regarding disclaimer in post-grant amendments in line with those in amendments, TIPO amended Chapter 9 “Post-Grant Amendment” of Volume II in the revised Patent Examination Guideline such that an undisclosed disclaimer is allowed only in any of the following circumstances:

  1. the undisclosed disclaimer is to overcome the lack of novelty;
  2. the undisclosed disclaimer is to overcome the lack of fictitious novelty (i.e., the lack of novelty with respect to earlier filed but later published Taiwan applications);
  3. the undisclosed disclaimer is to overcome the noncompliance with the first-to-file principle, provided that the application does not have the same filing date with the cited references;
  4. the undisclosed disclaimer is to exclude “human beings” from claims; and
  5. the undisclosed disclaimer is to exclude a technical feature overlapping with the prior art (Note: For this circumstance, it is required to submit the prior art together with a statement in which the reasons why the introduction of an undisclosed disclaimer is necessary are specified).

It should be noted that the above-described circumstance 5’ for post-grant amendments is similar to the above-described circumstance 5 for amendments but without the limitation of “prior to any invalidation grounds being received” or the like.  Therefore, it seems to be unclear whether or not a patentee can still make an undisclosed disclaimer based on the above-described circumstance 5’ even when invalidation grounds have been raised, for example, to exclude a technical feature overlapping with prior art that is cited in invalidation grounds regarding lack of inventive step.