Applicants watch out – TIPO publishes stricter examination guidelines
TIPO has published the amendments to its examination guidelines, which came into effect on 14 July 2021. These aim to improve the quality of examination and serve as a guide for examiners and a reference for applicants. The main alteration is to the rule for amending claims.
During the examination procedure, the applicant may need to alter the scope of the claim in order to exclude content that overlaps with the prior art without introducing new matter. As there have been some ambiguous practices in the past, TIPO has added several limitations to the disclaimer amendment. It can only be used to alter:
- a citation of novelty;
- a citation of novelty based on a legal fiction;
- a citation of the first-to-file principle, excluding ‘filed on the same date’; and
- statutory non-eligible subject matters (eg, excluding ‘human’ in the product claim or ‘steps for implementing on a living human or animal body’ in the method claim).
When providing the scope of the claim, it is common to use numerical values to show a range in temperature or pressure or weight percentages, among other things. The amended guidelines give a clearer explanation of what kind of amendment will not be deemed to be introducing new matter in the claim. If an applicant wishes to amend the numerical values in its claim, in particular the upper and lower values, the following two criteria should be met:
- the amended upper and lower values must have been disclosed in the original specification, claims or drawings; and
- the amended range must have been disclosed in the original specification, claims or drawings.
For example, the original claim disclosed that the viscosity of Compound A is 3,500cp to 10,000cp and the example in original specification stated that the viscosity of Compound A is 12,000cp. The applicant then wishes to amend the claim scope to assert that the viscosity of Compound A is 3,500cp to 12,000cp. When considering whether this proposed amended claim meets the standards set out in the new guidelines, the short answer is no. Even though the numerical value of 12,000cp was disclosed in the original specification and therefore meets the first requirement, the viscosity range of 10,000cp to 12,000cp was not disclosed in the original specification so does not meet the second one. Therefore, this alteration would be deemed to be introducing new matter and would not be accepted under the new guidelines. In view of these stricter standards, disclosing more numerical values and ranges in the original specification and claims is crucial.
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