萬國法律事務所

Amendment Issues in Patent Practice 

Frank Lu, Partner

frank.lu@taiwanlaw.com

Peggy Hung, Senior Vice Manager

peggy.hung@taiwanlaw.com

Timing to Amend: 

1.     Amendment during Examination:

During the examination of a patent application at Taiwan’s Intellectual Property Office (TIPO), the applicant may request an amendment(s) of the description, claim(s), or drawings.  Except for a correction of translation errors, no amendment shall extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed.  An applicant who intends to amend claim(s) after a final notice has been issued can only make the following amendments within the time period specified therein: (1) to delete claim(s); (2) to narrow the scope of the claim(s); (3) to correct errors; or (4) to clarify ambiguous statement(s). (See Article 43 of the Taiwan Patent Act).

2.     Post-Grant Amendment

After an application has been granted, the patentee can file a request to amend the description, claim(s) or drawing(s) of a granted invention patent, but can only: (1) delete claim(s); (2) narrow the scope of a claim(s); (3) correct errors or translation errors; and (4) clarify ambiguous statement(s).  Except for the correction of translation errors, a post-grant amendment cannot extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed, and cannot substantially enlarge or alter the scope of the claim(s) as published.  (See Article 67 of the Taiwan Patent Act).

What does “error” mean? 

Two judgments elaborate on the term “error” as follows:

The Supreme Administrative Court pointed out that an “error” refers to a person having ordinary skill in the art notices a mistake based on the specification and drawings and his knowledge.  The original meanings cannot be affected after the correction of the error (102-year-pan-ji-755).

The IP Court ruled that a “translation error” refers to errors that occur when a phrase or sentence is translated from a foreign language into Chinese.  In other words, the phrase or sentence is in the original foreign language documents, but the translation is not accurate or precise.  If some phrases or sentences in the original foreign language documents are not shown in the Chinese translation, then the correction rule does not apply (102-year-shin-zhuan-su-ji-114).

Practice before TIPO: 

The fact in the latter case (IP Court judgment) relates to a “missing translation.”  This is the case where the application is filed in a foreign language and the Chinese translation thereof is provided within the required time period.  When it happens, the patent attorney will request a correction in accordance with either Article 43 or 67 as indicated previously, and usually TIPO will allow such request as TIPO treats such “missing translation” as a type of “translation error.”  However, we need to observe more cases to see if TIPO changes its mind after the above-identified decision of the IP Court.  In addition, patent attorneys will have to pay more attention to applications filed in a foreign language in terms of proofreading the translations in order to avoid malpractice claims.