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On 19 April 2011, the Ministry of Economic Affairs announced the amendment of the Patent Examination Guidelines (Section 2, Chapter 6) regarding "patent correction." The amended Guidelines shall take effect on 1 May 2011. The above-mentioned "correction" refers to "corrections made after patent grant" which is different from "amendments made prior to patent grant." The major amendments of the Guidelines include the following:
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Relax the examination standards for reviewing "patent corrections"
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Prior to amendment, for any correction made with respect to claims that are written in a two-part form (Jepson type) , a patent owner can only proceed with the correction for "clarification of unclear disclosure" ground, and add a part of the technical features shown in the "characteristics portion" into the preamble portion of a claim. Through the amendment, any of the following corrections shall be considered to be made for "clarification of unclear disclosure" ground and shall be allowed:
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to convert a two-part form (Jepson type) claim into a combination type claim
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2. |
to convert a combination type claim into a two-part form (Jepson type) claim
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to add the technical features disclosed in the preamble portion of a two-part form (Jepson type) claim into the portion after the expression "characterized by/in that"
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Relax the examination standards for reviewing "whether there is any substantive change of patent claim(s)"
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Prior to amendment, for a correction made to introduce into the patent claim(s) the technical features disclosed in the patent specification or drawings, such correction was allowed only when the newly added inventive features (such as formic acid) is the lower-level technical features of the features originally disclosed in the claim(s) (such as organic acid), otherwise, the correction would be deemed one that has caused substantive change to the original claim(s). Through the amendment, for an correction that is made based on the technical features of the originally filed claims (such as Element A) so as to introduce additional technical features (such as, element A is comprised of elements a1 and a2), such correction shall not deemed having caused substantive change to the original claims provided that the "industrial application field of the claimed invention" or the "technical problem resolved by the claimed invention" remain unchanged.
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Prior to amendment, with respect to patent claims in which the technical features are expressed in means-plus-function or step-plus-function language, if a correction is made to add into the claims the description in the specification regarding the "structure, material or acts" corresponding to the above-mentioned function, such correction was not allowed. Through the amendment, the above-mentioned correction shall not be deemed as one having caused substantive change to the original claims.
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To facilitate patent examiners' and patent practitioners’ better understanding of how to handle patent corrections, through the amendment, examples of corrections (including examples generated from final court judgments) are stated in the new Guidelines in the following orders:
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Determination of a correction concerned
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Determination of whether a correction has exceeded the disclosure scope of the patent specification or drawings
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Determination of whether substantive expansion or change has been made to claims
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to delete an independent claim and convert a dependent claim into an independent claim
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to introduce into the claims the technical features disclosed in the specification or drawings
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It is expected that the examination of patent corrections shall become more clear and transparent after the new Guidelines take effect.
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