TIPO to relax restrictions on post-grant amendments and online evidence

Along with intensive debate over validity in patent infringement litigation, post-grant amendments and invalidation procedures are two of the hottest topics in Taiwanese patent practice. In order to comply with principles developed by the IP Court, the Taiwan Intellectual Property Office (TIPO) made several amendments to the Patent Examination Guidelines for Post-Grant Amendments and Invalidation on December 26 and December 29 2016, respectively. Both amendments took effect on January 1 2017. The trend is for TIPO to continue to relax restrictions on post-grant amendments and to allow patentees to rebuild appropriate claims after a challenge regarding new prior art evidence provided in connection with an invalidation. In addition, TIPO recently explained how to use online information as evidence in patent invalidation procedures.

Post-grant amendment
According to Article 69 of the Patent Act, the patentee may amend the description, claims or drawings of a granted invention patent only to:

• delete claims;
• narrow the scope of claims;
• correct errors or translation errors; and
• clarify ambiguous statements.

In addition, a post-grant amendment cannot substantially enlarge or alter the claim scope as published. 

In the past, TIPO maintained a conservative attitude when reviewing the requirement against “substantially enlarging or altering the claim scope”. Even if an amendment narrowed the claim scope, such amendment might still have been rejected on the grounds that it substantially changed the claim scope. This policy made it harder for patentees to overcome challenges raised by invalidation evidence submitted in patent litigation and administrative patent invalidation procedures. However, many patent professionals and practitioners have long suggested that patentees should have the opportunity to adjust claim scopes appropriately so that inventions could be protected properly under the patent system. 

TIPO now appears to be following these suggestions and has amended the chapter on post-grant amendments in the guidelines in order to relax the restriction on post-grant amendments. The key revisions are as follows:

• The methodology used to determine “substantial change” when judging additional technical features to the claim(s) for post-grant amendment has been amended. TIPO will consider the object of invention, the problem that the invention aims to resolve and the technical solution adopted to resolve the problem as a whole in order to determine whether the claim scope has been substantially changed.
• Examples of types of post-grant amendment have been added.
• The description used to judge substantial enlargement or alteration of the scope of the claim(s) has been reorganised.
• Example cases have been reorganised and amended.

Online evidence
Online information is abundant and is thus a good resource for seeking prior art. However, as online information may become inaccessible, it is relatively difficult to preserve such information and to prove the publishing date in litigation or administrative procedures.  

Several tools can assist in this regard. For example, Wayback Machine (provided by non-profit organisation the Internet Archive) archives web pages and has become an important resource in patent invalidation proceedings. One issue that has arisen is whether the information obtained from Wayback Machine is admissible as evidence. This has been widely discussed by the IP Court. In order to clarify this issue, TIPO studied these judgments and amended the guidelines accordingly.

The amended guidelines indicate that a webpage usually lacks information as to the publishing date. Even if such date is described on the webpage, it is still difficult to confirm that this is the true publishing date because the webpage can be revised. Supplementary evidence must be submitted in this regard. As such, the amended guidelines illustrate several ways that should be accepted to prove the publishing date of online information, as follows: 

• internet archive services such as the webpage archived by Wayback Machine;
• a timestamp, such as in the editorial history of Wikipeidia;
• a file directory or automatically recorded time, such as the time indication of an article published in a blog or a message sent on a forum; and
• the indexing date of an search engine, such as those found on Google cached webpages.

TIPO confirmed that the time records generated by popular web service companies are credible, and this confirmation will facilitate the use of online information as invalidation evidence.

TIPO also resolved some procedural problems with this amendment and introduced the following key revisions:

• Where invalidations contain several post-grant amendments, TIPO will review the last amendment, but will still review the previous amendments to confirm that they do not conflict.
• There is a new method of dealing with an invalidation if the targeted patent belongs to the category of one invention with two applications (although a patent registration can be sought for both an invention and a new utility model).
• The amendment provides for the investigation of online and foreign language evidence.

Future revision
TIPO continues to consider further revisions and amendments to the guidelines in order to follow IP Court precedent and international trends in patent practice. In addition, a draft of the inventive step amendments has also been completed and it is expected to be notifiec publicly soon. TIPO is attempting to provide clear and practical rules for the evaluation of the inventive step requirement. This amendment to the guidelines is supported by many professionals and is expected to be finalised and take effect soon.