Changes in Practice of Amending Claims by Disclaimer in Taiwan
Jian-Fu (Steven) Chen, Jou and Jou Patent Offices (Taiwan)
According to the Taiwan Patent Act, any amendment or post-grant amendment shall not extend beyond the scope of the content disclosed in the specification, claim(s), or drawing(s) as filed. That is, any amendment or post-grant amendment shall not introduce new matter.
In addition, the chapters “Amendment” and “Post-Grant Amendment” of the Patent Examination Guidelines in Taiwan disclose that “An amendment to exclude technical content that overlaps with prior art from claims may introduce new matter, since the exclusion cannot be directly and unambiguously derived from the specification, claim(s), or drawing(s) as filed. However, if the claimed subject matter, after the introduction of the exclusion, cannot be clearly and concisely defined by a positive expression, it can be recited in a negative manner that disclaims the overlapping portion with the prior art.” In other words, it is exceptionally permissible to amend claims in amendments or post-grant amendments by introducing a disclaimer (so called “negative feature”) to exclude a technical feature that overlaps with the prior art, in the case that the disclaimer itself and/or the excluded technical feature is not disclosed in the application as filed. Such amendments are referred to as “amendment by disclaimer”.
However, the Patent Examination Guidelines do not mention any other limitations on the “amendment by disclaimer,” hence creating a “gray area” for the conditions under which it is applicable. In practice, applicants or patentees could make the “amendment by disclaimer” to patentably distinguish a claimed invention from a prior art reference to address the issues of novelty and/or inventive-step, and the Taiwanese Intellectual Property Office (TIPO) had always accepted that in the past.
To rectify the deficiency and vagueness in the current Patent Examination Guidelines, as well as to reduce excessive and improper use of the “amendment by disclaimer”, the TIPO provided a further explanation of the aforementioned section in the Patent Examination Guidelines on November 19, 2020, which specifies and limits the applicability of the “amendment by disclaimer” to the following conditions:
1. to exclude the overlap with a prior art reference for addressing the issue of novelty under Article 22(1) of the Patent Act;
2. to exclude the overlap with an earlier filed but later published Taiwan application for addressing the issue of novelty under Article 23 of the Patent Act;
3. to exclude the overlap with a prior art reference for addressing the violation of the first-to-file doctrine under Article 31 of the Patent Act, which is not applicable when the patent application has the same filing date with the prior art reference;
4. to exclude non-statutory subject matters from claims, including:
a. to disclaim parts relating to “human beings” in product claims; and
b. to disclaim “steps performed on animate human and animal bodies” in method claims.
In short, according to the above, the “amendment by disclaimer” can mainly be used to address the issues of novelty and non-statutory subject matter, but is no longer available to address the inventive step issue. Even so, the regulations for the applicability of the “amendment by disclaimer” in Taiwan are much less strict than those of other countries such as the EU or Japan. Therefore, it is still a feasible and effective strategy for applicants or patentees to make the “amendment by disclaimer” in order to overcome a single prior art (novelty) rejection.