APAA e-Newsletter (Issue No. 25, October 2021)

Amendments to Patent Examination Guidelines in Taiwan – Altering a Claimed Numerical Range Limitation

Sharon Lin, Yeang Jen & Associates (Taiwan)

 

The Taiwan Intellectual Property Office (TIPO) published an amendment to the Patent Examination Guidelines for amendment of claims in Chapter 6 of Part II.  This amendment is effective from July 14, 2021.

In case the recitation in the claims fails to meet the recitation requirement, such as claims being indefinite, and applicant is required to amend the claims, or when applicant submits amendments for other reason, the content of the claims after amendments shall not extend beyond the scope of content disclosed in the specification, claims or drawings as filed. Regarding the alteration of the numerical values limitation in the claims, the following are related requirements according to the Patent Examination Guidelines:

1. Contracted from a broader scope to a narrow scope which has better effect according to the embodiment recited in the specification. For example:

The react condition for a chemical method is pH=6~12. In original claim and the embodiment in original specification recites that pH= 6~8 is a range which can bring better effect. If the react condition of pH=10~12 belongs to prior art and anticipates the boarder pH range in the original claim, the amendment of claim to re-limit the pH range to “6 to 8” is permissible. However, to re-limit the pH range to “pH=6~9” is not allowable, because this limitation “pH=6~9” is not explicitly disclosed in the original specification.

2. Expanded from a narrow scope to a broader scope according to the embodiment recited in the specification. For example:

The original claim recites an instant setting adhesive of effective ingredient x, which has a HLB value (hydrophile-lipophile balance number) ranging from 9 to 11. If the embodiments in the specification has recited several instant setting adhesive of effective ingredient x, of which HLB value range is 7.5 to 11, amending the claim to redefine the range of HLB value as 7.5 to 11 is allowable.

3. Regarding the modification of the upper and lower terminal numeral value recited in the claim, if the amendment meets both the following two conditions, the amendment will not be deemed to introduce new matter and is allowable.

a) The terminal numeral value of the numeral range after modification has been disclosed in specification, claims or drawings as filed.

b) The numeral range after modification has been included in the specification, claims or drawings as filed.

For example:

  1. Original claim recites a temperature range 20℃~90℃, and specification or claims recites specific temperature values 40℃、60℃和 80℃ within the temperature range 20℃~90℃, the amendments of the temperature range in the claim to recite 40 ℃~80℃、60℃~80℃ or 60℃~90℃ are allowable.
  2. Original claim recites a pressure-sensitive adhesive composition comprising cross-linkable acrylic resin polymer, polyfunctional cross-linking agent, and polyfunctional acrylic ester. Embodiment 1 in the specification as filed recites pressure-sensitive adhesive composition A, of which the viscosity measured at room temperature is 3,500cP ; Embodiment 2 in the specification as filed recites pressure-sensitive adhesive composition B, of which the viscosity measured at room temperature is 10,000cP. If applicants want to amend the claim, to recite a pressure-sensitive adhesive composition comprising acrylic resin polymer, polyfunctional cross-linking agent, and acrylic ester, where the viscosity of said pressure-sensitive adhesive composition at room temperature ranges from 3,500cP to 10,000cP, because the numeral range limitation “3,500cP to 10,000cP” cannot be known directly and unambiguously from the disclosed contents of specification, claims or drawings as filed, the amendments will be deemed to introduce new matter.
  3. Original claim recites a pressure-sensitive adhesive composition comprising cross-linkable acrylic resin polymer, polyfunctional cross-linking agent, and polyfunctional acrylic ester, where the viscosity of said pressure-sensitive adhesive composition at room temperature ranges from 3,500cP to 10,000cP. Original specification recites the viscosity of said pressure-sensitive adhesive composition measured at room temperature ranges from 3,500cP to 10,000cP, and original specification provides other embodiment which recites a pressure-sensitive adhesive composition having a viscosity of 12,000cP measured at room temperature. Because the numeral range 10000cP to 12000cP is not covered by the numeral range disclosed in specification, claims or drawings as filed and cannot be known directly and unambiguously therefrom, modifying the viscosity numeral range from “3,500cP to 10,000cP” to “3,500cP to 12,000cP” will be deemed to introduce new matter.

4. Modifying the numeral range by negative limitations. For the numeral value not disclosed in the specification, claims or drawing as filed but known as prior art, as an exception, amending the numeral range by exclusionary proviso (by expression “not including” or the like) is allowable. For example :

Original claims recites a numeral value X1=600~10,000 and the ranges of the prior art is X2=240~1,500. In case that the numeral range X1 is anticipated by X2 due to the numeral range partly overlaps, because the value 1,500 is not disclosed in specification, claims or drawings as filed, changing the numeral range to X1=1,500~10,000 with the value 1,500 included in is not allowable. However, as an exception, to exclude the overlapping numeral ranges by an exclusionary proviso is allowable. Applicants can amend the numeral range to recite “X1>1,500~10,000” or  “X1=600~10,000, not including 600~1,500”.