*Is it legal for a patentee to move the technical features in the
description into the claims for further limitation of the claim scope after a patent
The seriousness of this issue can be seen under the following
- The original allowed claims are drafted in a metaphysical manner.
- The features of the lower level (e.g. a specific embodiment) disclosed in the
description of the specification but not recited in the original claims must be
incorporated into the independent claim 1 in order to effectively overcome the
anticipation of the prior art.
The core problems of this issue include:
- The to-be-incorporated specific features do not originally appear in the claims. Will
the public domain theory be undermined by allowing such incorporation?
- What is the theoretical basis for such incorporation?
- Is it fair for such incorporation/
While drafting the claim set, the scope to the largest extent is put in
the claim 1 from which more and more subordinate features depend and are put in the
dependent claims. As such, theoretically, the lower level feature is in fact protected or
contained in the original scope, but is intentionally or negligently not claimed in the
original claims. Is it permissible for the patentee to include the subordinate features
into the independent claim 1 for inviting a fair reexamination by the Patent Office? For a
country, i.e. the US having the reissue system, it is not difficult to find the answer.
For the rest countries having no reissue idea or statute, the answer is not readily
apparent. As such, we hereby reason for this issue as follows:
- Before a patent issues, its claim or protecting scope is ¡¥floating¡¦ and is
optionally subject to be ¡¥properly¡¦ decided by the applicant through its subjective
understanding or wills with reference to the objectively found cited references.
Nevertheless, after the patent is definitely granted, we have a strong challenge from the
public domain theory that those technical features which hade not been claimed in a
published application have fallen into the purview of the public so that any interested
party can optionally make use of them. Thing must go in this way in order that the
protecting scope of a specific patent can be definitely decided so as to expressly give
notice to the public what are prohibited to illegally trespass and where are the field the
public can freely chase their games there.
- The situation will be simpler if the original claim set is well-done by which we mean
the original claims include the large scope independent claim (hereinafter referred to as
Large Claim) which is metaphysically drafted, the medium scope dependent claim
(hereinafter referred to as Medium Claim) which recite why or how many implementing
architectures or principles are available for kinds of embodiments and the small scope
dependent claim (hereinafter referred to as Small Claim) which specifically claims most
preferred embodiments. Such ¡¥perfect¡¦ claims normally will not cause much or big
problem in any case. For example, even attacked by strong cited references after issued, a
simple incorporation of dependent claims into the independent claim normally will survive
the patent thereover after the surrender of the independent claim. Such incorporation or
scope reduction can hardly find any problem in any country. Difficulties will present only
when the patent contains Large or Medium Claims without Medium or Small Claims. Can we
dictate on behalf of the patentee at this situation that its real intentions include that
what it desires to be protected in the claims is as large as what are reflected by the
claims then on file, that it is willing to accept any result including the invalidation of
the patent if all the then-current claims are defeated by any later possibly found cited
references, and that any one is inhibited from interfering with the protected scope of the
patent if he/she cannot in any way challenge the patentability of the then-current claims?
- It appears that we have the rights to do the above dictation. If not, how the public can
exactly determine how the claims will be ultimately interpreted or narrowed to which
extent if there is an infringement dispute. There is a subtle question here, is it
necessary for a possibly potential infringer to try all its efforts to ascertain what is
the real protecting scope of a specific patent if it has questions on the validity of the
patent, in whole or in part? Further, it is extremely dangerous if we take that the
patentee can at a later time optionally narrow its claims to a specific scope it loves at
a specific time in a specific circumstance. This is because how the public can determine
the real, ultimate and definitely survivable protecting scope of the Patent without
trouble and worry that what is legal today will become liable tomorrow. Is it the
responsibility of the possibly potential infringer to make certain whether the
then-current claims are finally reliable? If found questionable, is it necessary for this
¡¥possibly potential¡¦ infringer to initiate at its expenses some kind of action capable
of emerging the legally fair final claim set?
- Accordingly, if the Large Scope cannot be protected and there is no Medium or Small
Scope in a patent which can be merged into the independent claim for scope limitation, the
patent should thus be invalidated which can only be attributed to that why the patentee is
so reckless as to present no Medium or Small Scope in the patent, that why it is
originally so greedy as to be missed in the midst of desires and why it is so imprudent as
to not find a competent patent attorney to draft therefore a proper set of claim?
- The above reasoning is the most reasonable explanations under the present law system.
Article 44bis(3) of the Patent Law stipulates that ¡§after 15 months from the following
date of filing an invention patent application, the applicant may supplement or amend
specification or drawings only in the following various dates or periods:
- At the same time of petitioning substantive examination;
- Within three months from the following date of receipt of service of the notification
that the application proceeds with substantive examination where the substantive
examination is requested by one other than the applicant;
- Within the period of response to the pre-action notification of the patent-dedicated
- At the same time of requesting reexamination or within the period within which the
reexamination briefs may be supplemented;
- Within the period for responding the opposition;
- Within the period for response notified by the patent-dedicated office having ex officio
The law restricts the opportunities of specification (including claim)
amendment to the above situations, which vividly expresses that the law rejects that an
amendment can be optionally effectuated.
- The only possible flaw existent in the above reasoning is that if further features are
moved into the independent claim, its protecting scope is narrowed down and the narrowed
claim will not do any harm to the public since the new scope is a retreat from the
original scope and further allows the public to place their steps in a wider range. The
most powerful counter arguments might be the public will gain more if the patentee is not
allowed to make a supplemental narrowing amendment. Which argument is more moving to the
hearts of yours and ours? It is not known how we should interpret Article 44bis(4) of the
Patent Law which provides ¡§Supplement or amendment made according to the preceding three
paragraphs shall not change subject matter of an application; in addition thereto, if
submitted after publication of the examined invention application, such supplement or
amendment may be entered only under any of the following circumstances:
- Unduly broad claim;
- Erroneous matter;
- Unclear statement.¡¨
Which position the provision of Article 44bis(4)(1) of the Patent Law
will ultimately stand up for? Does it not care in any case if the claim is finally
narrowed down? Does the article order show any particular import? Specifically, does it
represent that Article 44bis(4)(1) will function only when Article 44bis(3) has duly
*A further exploration to the preceding section
After a repeated attempt in the above section, although it appears we
have a deeper understanding to the present topic, it would seem that we could still not
leisurely get the answer. As such, a further exploration is made in the following.
If there comes a patent only with Large Scope, is it legal for us to
take that there comes a right for the public to take that if one is confident to
invalidate all its claims on file, one is free to regard the patent as nothing or
non-existent? This must be a right since one cannot predict which patent is a patent which
will finally survive over attacking cited references by means of a narrowed down set of
claims, in view of the fact that generally, when the full claim set has been invalidated,
it is quite popular that the patent in issue will be totally invalidated. This right of
anticipation must be fair, justified and equitable when compared with the unpredictable,
arbitrary, accidental and abrupt reclamation of the patentee. We can add to support such
position by the following reasoning:
- From the above-mentioned Articles, it appears that we can conclude that the
specification or claim is not changeable in principle and can be amended only in
exceptional case in limited instances. It is well-taken that what a specific patent
protects is defined in the claims which are the essential or the core part of the patent.
Accordingly, the patentee cannot arbitrarily petition the amendment through its personal
determination or negligence. Could we determine that the patentee is arbitrary because it
does not submit a set of properly drafted claims upon filing or responding to the office
action? Could we decide the patentee has a negligence simply because it does not recheck
the propriety of the claim scope before the patent application is to be finally issued?
- We can uphold such holding by interpreting that there are two meanings for ¡§subject
matter,¡¨ i.e. one being ¡¥subject matter in substance¡¦ and the other being ¡¥subject
matter in formality.¡¦ By the latter, we mean pure incorporation of dependent claim(s)
into the independent claim will in no way introduce any new matter into an application.
Nevertheless, any attempt of varying or changing the claim scopes presented by all
possible protecting scope combinations of the full claim set in the application will add
new matter into the ¡¥subject matter in formality¡¦ of the application and is thus
- The phraseology of the Patent Law includes ¡¥correction¡¦ and ¡¥amendment.¡¦ The
former always relates to the rectification of minor or clerical errors while the latter
could relate to rearrangement or redraft of a claim set without escaping the confinement
of the original ¡¥subject matter in substance.¡¦ Since the item of ¡¥unduly broad claim¡¦
is in the group additionally including ¡¥erroneous matter¡¦ and ¡¥unclear statement,¡¦
as stipulated in Article 44bis(4) of the Patent Law, they should all relate to ¡¥simple¡¦
or ¡¥slight¡¦ ¡§correction¡¨ to ¡¥subject matter in formality¡¦ but not ¡§substantial
- Are the above arguments convincing? If not, what we have gained through the above
exploration? If yes, will we retreat if we learn the arguments from the Plaintiff that it
is innocent enough since it has no opportunity to revise or amend the claim in view of the
cited references? How can the world base the justice on the mishap it is innocently
suffering? Are you moved by such arguments? If yes, how can we get our answer under this
further exploration to the topic?
*What the invalidation system is supposed to govern? Is it proper for
such system to allow the adjustment of a claim scope?
Can we base the assertion that the patentee cannot move the technical
features originally not existent in the claims from the description in the invalidating
proceedings on that the institution of the invalidation system is to cancel the illegal or
improper issued patent, and that it must be limited to the change of the formal subject
matter if it really relates to the scope adjustment?
As mentioned earlier, the above assertion is reinforced in view of the
provisions of Articles 44bis (3)(5), 44bis (3)(6) and 44bis (4). This is especially true
if we come to know the amendment history of the Taiwan Patent Law. Specifically, Article
36 of 1986 Patent Law stipulating ¡§the Patent Office may ex officio or according to the
results of an opposition instruct the applicant to revise the specification and drawings¡¨
(First Law) was substituted by Article 44 (4) of 1994 Patent Law stipulating ¡§supplement
or amendment made according to Item 3 of the first paragraph shall not change subject
matter of an application; in addition thereto, if submitted after publication of the
examined invention application, such supplement or amendment may be entered only under any
of the following circumstances:
- Unduly broad claim;
- Erroneous matter;
- Unclear statement,¡¨ (Second Law)
which was substituted again by Articles 44bis (3) and 44bis (4) (Third
Law) which is proposed to be revised into corresponding Articles 63(1) and 63(2) of Patent
Law Amendment Draft stipulating ¡§an invention patentee may petition to the patent
dedicated office to enter an amendment to the patent specification or drawings only under
any of the following circumstances:
- A reduction of the claim;
- A correction of an erroneous matter;
- An illustration of an unclear statement.
The amendment in the preceding paragraph cannot be made beyond matters
disclosed in the original specification or drawings upon filing, and cannot broaden or
change the subject matter of the claim.¡¨ (Fourth Law)
The above law amendment history reflects that the Second Law delimits
at what circumstance the specification, drawings or claims can be amended, and that Third
Law makes it clear under which opportunities the specification, drawings or claims can be
amended so that it would appear to be safe for us to conclude that the Law is getting more
and more strict with respect to the amendments of specification, drawings or claims and it
would seem we could take that in the Fourth Law, we could equate ¡¥broaden¡¦ for ¡§the
subject matter change in substance¡¨ and ¡¥change¡¦ for ¡§the subject matter change in
formality.¡¦ Are we correct or crazy to so hold?
Is it rational for us to hold that since there is no comparable
provision in Article 44bis (3), it is impossible for us to amend the specification,
drawings or claims after the issue of the patent, which has passed the publication period
or stage for opposition. It is to be noticed that the opposition system is to be abolished
in the Patent Law Amendment Draft.
As a matter of fact, the real situation for the Patent is that the
Plaintiff attempted to move technical features which are even not seen in the
specification but only in the drawings. Is it not clear that the Plaintiff had originally
deemed the moved features as nothing? If this is the case, why can the Plaintiff magically
turn ¡¥nothing¡¦ into ¡¥something¡¦ for attacking others? Don¡¦t you believe this is
too much accidental, abrupt, unpredictable, imaginable and unconformable to the legal
feeling or emotion of the human being? Isn¡¦t it an insult to the Patent Law if the Law
permits amendment for such moved features into the claims after the patent issues?
We would like to raise more jurisprudential bases for the above ¡¥allegation¡¦
- The protecting scope of a patent is declared by its claims which clearly distinguish for
any one where and how the scope is? The public should not have the obligation to ascertain
whether the claims have fully recited what the patentee have really or completely claimed
what it desired, desires and will desire. Should a private individual rights be protected
to an extent that the general interested parties should bear indefinite worry or uncertain
care as to whether they would ultimately infringe?
- It appears to be smart for us to categorize the ¡§subject matter¡¨ into ¡¥subject
matter in substance¡¦ and ¡¥subject matter in formality¡¦ to theoretically reinforce
and support the above allegation.
- Theoretically, a reduction of scope can be fully and easily evidenced only when we
incorporate the dependent claims into the independent claim. It is not so readily clear to
recognize whether it is really a reduction of the claim scope if we moved technical
features into and out of the independent claim.
- If there is a reorganization or new arrangement of the featuring elements of the
application, it is quite difficult for a stable conscientious mind to believe that there
is not a changed subject matter. Is it reasonable that all the above stout reasons are
overturned by the possibility that the patentee might merely petition to purely include
additional features into the independent claim? Is there a compromise between the
above-mentioned two extremities?
*An initial exploration to 35 USC¡± 251(4)
Paragraph 4 of 35 USC¡± 251 provides that ¡§no reissued patent shall
be granted enlarging the scope of the claims of the original patent unless applied for
within two years from the grant of the original patent.¡¨ An initial reflection on this
paragraph after puzzled with the above issues includes:
- Do the reasons why the US is the sole superpower presently in the world include that 35
USC includes the unique reissue system by which the patentee can legally adjust the claim
scope after the patent issues and broaden the claim scope within two years from the patent
- Upon broadening the claim scope within two years after the patent issuance without
introducing therein any new matter so far as the original disclosure is concerned, there
is no problem that such provision provides warmly humanized considerations for allowing
the patentee to recover what it should have entitled to. Nevertheless, must such humanized
considerations be capable of surviving over opposite concerns disclosed above?
- If we can accept that broadening the claim must be submitted within two years from the
patent issuance, is it reasonable for us to assert there should also be a time limit if
the patentee desires to move technical features not recited in the original claims into
the independent claim? The possible supporting reason for this is that the Patent does not
in any way explicitly or implicitly mention or hint it is possible that the patentee will
include what kind of technical features in the claims sometime in the future. Is 35 USC¡±
251 reasonable to allow narrowing down the claim without any time limit from the viewpoint
of an interested party or the general public?
- If a system has run smoothly, at least in appearance, for a relatively long period of
time, is it not prudent, advantageous or desirous to be encouraged to discuss whether it
should be changed or discussed to a further extent in order to minimize the randomness of
the social or legal order?
*Is there an equitable compromise to what is concerned?
Before we could think to strive to answer this question, we would still
like to list possibly relevant factors encircling the core issues of this question as
follows in view of the above opposite and grueling debates:
- Can the declared claim scope in an issued patent be later changed? For a life in the
world today, although the human being has been accustomed to chasing new, queer and
current things so that the stable and stationery life mode is never attracting, ¡¥a
stabilized legal living order¡¦ is still compulsory and necessitated for engaging our
legal lives. So far as this factor is concerned, we have the following sub-factors to be
- What the declared claims are representing? Do they declare before the general public
what the patentee reserves and gives up? Specifically, can we declare therefor what have
been disclosed in the specification and seen in the claims are what the patentee desires
to protect and what are not declared in the original claims are not what the patentee
would like to seek protected? How much correctness this declaration has?
- What it would stand for when the declared claims have passed the opposition period or
been issued? Does the official publication or the issuance of the declared claims merely
represent whether they could exist? Or, does it merely exemplify a specific type of scope
the involved patent could have so that their truthfulness and the effectiveness are
subject to possible debates at a later stage?
- What are the realistic interests if we allow changes to the claims after their issuance
or publication? Do they include considerations in the following?
- Has the patentee unjustly enriched due to the claim change?
- Are the public interests really damaged through the claim change?
- Is there a justifiable compromise existing between the patentee and the general public
or interested parties so far as the claim change after the clam publication or issuance is
- If yes, can the declared claim scope be broadened? It would appear that all the
sub-factors are not easy to deal with. If we temporarily suppress some kind of emotion in
our mind and recognize that the claim change after issuance or publication is appropriate,
can the patentee try to broaden the claim scope while conducting the claim change? So far
as this factor is concerned, the following sub-factors are involved:
- The truth is not easily obtainable. Our mind or thoughts will be enlightened by studies
to materials of the comparative laws if we are staggering among yes, no, properness and
improperness and are struggling to move forward to which road. What kind of impact we
should have in view of the reissue provisions in the US which can be found without
- It can be easily concluded that there should be a time limit if we allow broadening the
claim after issuance or publication.
- It is also easy to come to the conclusion that if we deny broadening the claim after
issuance or publication, it must be based on considerations of the stability of the legal
order and the public interests.
- If the answer to the item 1 is affirmative, does it conflict with contents of the public
domain theory? It would appear we have made it clear that the public domain theory relates
not only to the broadening of the claim scope but also to the narrowing of the claim
scope. For example, if we do not permit the narrowing of the claim, there will be no
infringement by a third party. But if we permit, the third party might be infringing. So
far as this factor is concerned, we have the following comments:
- If we permit broadening the claim in a specific time period after issuance or
publication, does there naturally come to the conclusion that moving the technical
features not seen in the original claims from the descriptions into the independent claim
is certainly practicable? If the former is impermissible, will the latter also be
- Can the latter be existent independent of the former? From the viewpoint of the
patentee, what interference there will be if it tries to reduce the claim scope? Why
should such active honest or passive kind behavior be prohibited?
- If the latter is permissible, should it have a time period for petitioning?
- How can the patentee seek a relief if it causes issued a patent having an improper claim
scope? Can such relief be performed through the invalidating system? We would like to list
sub-factors for these issues as follows:
- Is it necessary for us to establish an exceptional system for relieving special cases?
Will this complicate or simplify the matter?
- Since the incorporation of a dependent claim into the independent claim is absolutely
permissible, can we allege that the claim scope reduction needs not necessarily
permissible under the Taiwan Patent Law if we define the claim scope reduction is referred
to moving the technical features not existent in the original claims into the claim from
the specification? If the incorporation of claims is so natural, can we take that the
claim scope reduction in the Patent Law is not to be applied to rule this situation so
that the claim scope reduction should be referred to newly claim technical features from
- How should we interpret, amend or institute what kind of law system to the above effect?
- Can we or is it proper for us to apply the invalidating proceedings which are originally
established to cancel illegal or improper patents to broaden or narrow the claim? If this
is the case, can we interpret a patent having an overbroad claim scope is illegal? Will
this complicate the matter since if yes, the patentee should be free and have the rights
to defend its patent?
- What is the propriety for the reissue system to so relief? It is not known whether this
article will help solve or complicate the problems relating to broadening or narrowing the
claim scope after issuance or publication. Before we discuss more, let us examine the
requirements or conditions of Paragraph 1 of 35 USC¡± 251 as follows:
- ¡¥Through error without any deceptive intention¡¦: Kindhearted or innocent
protagonists in moving stories are valuable, sympathy-soliciting, lofty and admirable in
the world having a tighter and tighter competition living environment today. In as much as
the accumulation speed of the technology is so terrifying, how could we be hardhearted
enough to require one to be responsible for error made without any deceptive intention,
which is merely just like a force majeure? Nevertheless, it would appear that freeing from
such responsibility will inflict an unpredictable future of the patent on the general
- There are the following application opportunities, i.e. ¡§by reason of a defective
specification or drawing, or by reason of the patentee claiming more or less than he had a
right to claim in the patent.¡¨ We would like to discuss how ¡¥the patentee claiming
more than he had a right to claim in the patent¡¦ in the US reissue law (the former) is
different from ¡¥an overbroad claim¡¦ or ¡¥a claim reduction¡¦ in Taiwan invalidation
law (the latter) as follows:
- The former is seen in the reissue system which is parallel to the reexamination system.
As is known, identical words or terminology in two different systems might have different
meanings. For example, reexamination in Taiwan Patent Law means a response to the first
office action. Accordingly, it appears to be natural for us to conclude that similar words
in different systems might have different meanings.
- Since it is readily clear that the reexamination under the US practice will not deal
with the claim scope adjustment, for those countries having no reissue system, should they
compare or refer to the US reexamination law or try to absorb the spirits of the
provisions in the US reissue law for their own invalidation laws?
- Should we allow the similar relief as in the US reissue law in the Taiwan invalidating
proceedings? Who can and how can we compare or compromise between the possibly ¡¥innocent¡¦
patentee and the general public for the rights possibly having been in the public domain?
- ¡§Deemed wholly or partly inoperative or invalid¡¨: As such, the reissue system is not
to rescue a patent, which is not inoperative (e.g., there is a misplaced element) or
invalid (e.g., the original claim scope is overbroad in view of the prior art).
- The formalities include ¡¥the surrender of such patent and the payment of the fee
required by law.¡¦
- ¡¥The Director shall reissue the patent for the invention disclosed in the original
patent, and in accordance with a new and amended application¡¦: From this sentence, we
can know clearly that the US practice allows moving the technical features not seen in the
original claims from the description.
- The reissued patent can only enjoy patent protection ¡¥for the unexpired part of the
term of the original patent¡¦ in order not to invade into rights of the general public.
- ¡¥No new matter shall be introduced into the application for reissue¡¦: It should be
clear that ¡§new matter¡¨ here is referred to the above-mentioned ¡¥subject matter in
substance¡¦ and is irrelevant to the ¡¥subject matter in formality.¡¦ As such, any
technical features expressly disclosed in the description can be optionally added as
*A suggestion to those countries which do not have the patent reissue
We are tired and somewhat lost through the detailed discussion on the
above. We would like to establish pseudo conclusions as follows:
- Principles for the reissue and the invalidating proceedings are different. Specifically:
- Frankly speaking, the US deserves to be praised because of its establishment of the
reissue system for rescuing the wholly or partly inoperative and invalid patent in an
effort to better protect rights of the inventor or patentee.
- Because of a relief for a damage, potential complaints or bursting grievances will not
accumulate to ruin the social order and to interfere with the national progressiveness.
Although the patentee has some responsibility in resulting in the inoperativeness or
invalidity of the patent, it appears to be desirous to have the reissue system for going
to the claim scope rescue.
- While the reissue system can properly rescue the claim scope, how those countries
without such system should so rescue? Since every country has the invalidation procedure,
should we allow the claim scope adjustment in the invalidating proceedings. If not, how
should we do?
- Should all countries except the US try to institute the reissue system as soon as
possible for the benefits of their patent system and people? If not, does every country
have a proper mechanism for such rescue?
- Before the formal institution of the reissue system, it would appear to be a good idea
to loosely interpret Article 67(1)(1) of Taiwan Patent Law to permit addition of technical
features from the original descriptions into the claims for further limiting the claim
scope, which, at least in appearance, does not in any way deprive rights or interests of
any other in the world, but only recovers what has been inadvertently lost or not been
properly claimed, which is a kind of damage, which should be relieved or rescued.
- In addition to ¡¥specially or wrongly interpret¡¦ Article 67 of the Taiwan Patent Law,
can we permit claim scope adjustment in the invalidating proceedings? It is believed this
is not a good idea since exceptional cases should be minimized to the largest extent. In
as much as we can apply Article 67 to so rescue, we should not try to complicate the law
application or confuse the law system.
- Have we retreated from what we should insist in maintaining the intactness of the Patent
Law in the above opinions?
- It would thus appear that an independent reissue system is necessary for handling the
scope adjustment either of broadening or narrowing the claims. In as much as the
invalidating proceedings are intended to cancel the improper or illegal patent, it is
improper for the Patent Office to allow scope adjustment unless the patentee explicitly
applying the scope adjustment law. Specifically:
- If the above analyses have made it clear that the scope adjustment after the issuance or
publication of a patent is necessitated, it is necessary for those countries which does
not have the reissue system to enact the scope adjustment law, which might be a new
interpretation to its current law, may be a new law to be established or could even be a
reorganization or rearrangement of its current law.
- If the necessity of reissuing or adjusting the claim scope of a patent becomes apparent
in the invalidating proceedings, the patentee should apply the scope adjustment law and
the invalidating proceedings should suspend immediately and further proceed only after the
claim scope adjustment issue has been solved.
- If we take it for granted to apply the reissue law or the scope adjustment law, whether
there will involve in a new matter if we move technical features originally not in the
claim from the description will no more be a worrying or troublesome problem.
- The remaining problem will be whether the reissue system is really fair, equitable and
justified. Unfortunately, it would appear that we cannot by our above reasoning provide a
definite answer to this issue. Nevertheless, it would seem that we have disclosed enough
cues for those who are interested to make further studies to this topic. Are we not?
Claims We Have
- A ¡§non-new matter¡¨ in the description of the specification text needs not be a ¡§non-new
matter¡¨ in the claims of the same application.
- A ¡§new matter¡¨ in the claims needs not be a ¡§new matter¡¨ in the specification.
- Before grant, the applicant can freely move the features disclosed in the description of
a specification into the claim for further claiming, limiting or distinguishing the
application from the prior art.
- After grant, the applicant can no more optionally move features from the description
into the claim since such action might interfere with the public rights derived from the
public domain theory. Such error can only be rectified through the proper petition system,
e.g. the reissue system in the US. For those countries, e.g. Taiwan, where there is no
provisions relating to the reissue, it might be possible to find some article(s), e.g.
Articles 44bis and 67 of Taiwan Patent Law to controversially explain the possibly
equivocal sentence or clause therein to temporarily solve the question or satisfy the
necessity of scope adjustment.
- The attempt of negating an irrevocable court decision is not defying or doubting and is
irrelevant to the chastity of the queen but merely relates to the trial of representing
the real justice or the king on the decision or nice looks of the queen.
- An appeal in part in the invalidation proceedings should be acceptable.
- Although some articles in the Taiwan Patent Law can be used to support one¡¦s specific
position on the current topic, it is believed that they are never good laws for ruling the
issue the present article is discussing.
- It is a good idea to base the prohibition of scope adjustment in the invalidating
proceedings on the reason that the public should not have the obligation to ascertain
whether the claims have fully recited what the patentee have really or completely claimed
what it desired, desires and will desire.
- There will be no controversy that the US reissue system is a wonderful law if we believe
a claim scope adjustment after the issuance or publication is permissible, necessitated
- We are not ultimately certain as to whether the reissue system is really fair, equitable
and justified. The world is imperfect. We cannot act only after we have definitely
determined what we believe is true since a truth today might be false tomorrow. While the
reissue system is apparently wonderful, we do not see what might be more wonderful
although we do know where the weak points of the reissue system are in light of the above