When amending the scope of a claim by narrowing the range of the numeric values, such as narrowing the range of “0.001~2wt%” to “0.1~1wt%” in a claim, intuitively the scope of the claim is narrowed and such amendment seems to be acceptable. However, a simple amendment by narrowing the range of the numeric values in a claim may be deemed to have extended beyond the scope of the original specification and cannot be supported by the original specification therefore.
According to Article 22.II of the Patent Act in Taiwan “Except for correction of translation errors, any amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed.” Furthermore, “Substantive Examination Guidelines for Invention Patent” in Taiwan gives some examples to illustrate the rules of amending the range of the numeric values in claims.
One of the examples in “Substantive Examination Guidelines for Invention Patent” describes that the range of condition for the chemical reaction is pH=6~12 as mentioned in the claim and the embodiment in the specification mentions that the range of preferable condition for the chemical reaction is pH=6~8. If the technical feature pH=10~12” has been disclosed by the prior art, it is allowable to amend the condition in the claim from “pH=6~12” to “pH=6~8” since the specification has disclosed the condition pH=6~8. However, it is not allowed to amend the condition in the claim from “pH=6~12” to “pH=6~9” since the specification does not describe “the range of condition for the chemical reaction is pH=6~9” clearly.
The critical point is whether the numeric value is disclosed and substantively supported by the specification or not. From the previous example, the specification does not disclose the technical feature and the effect that “the condition for the chemical reaction is pH=9”. In general, if an invention needs to be defined by numeric values in order to be distinguished from the prior arts, the said invention usually belongs to the technical fields which are more unpredictable. On the other hand, if the range of an invention is predictable, merely changing the range would be deemed to lack an inventive step. Hence, if a claim of an invention is defined by a range of numeric values, the content of the specification thereof should at least illustrate the connection between the numeric values with upper and lower limits and the special effects which the invention achieves.
A claim should be substantively supported by the specification, which means the specification should describe the claimed technical features and the effects to be achieved. On the contrary, if the specification merely describes various numeric values but does not mention the features and the effects thereof, it would merely be “formally” instead of “substantively” supported by the specification. Although whether a claim is substantively supported by the specification or not depends on the examiner’s point of view in a certain extent, a claim which is “formally” supported by the specification is not consequentially allowable under the practice in Taiwan according to our experience.
Conclusion
The scope of the amended claim is beyond the scope of the specification, claims or drawings.
Explanation
The specification, claims or drawings do not describe the value of 0.1wt % or 1wt %. Furthermore, the range is not specified to “0.1~1wt %”. Hence, the amended range “0.1~1wt %” cannot be directly and unambiguously derived from what is disclosed in the specification, claims or drawings as filed. The said amendment will cause new matters.
Delivered by: Sandy WANG (Ms.) / Senior Partner
JAW-HWA INTERNATIONAL PATENT &
TRADEMARK & LAW OFFICES
10-1A Fl., No. 23, Sec. 1, Chang-An E. Rd.,
Taipei, Taiwan, R.O.C.
Tel.: +886 2 2531-0876 Ext. 172
Fax: +886 2 2581-2761
www.jaw-hwa.com.tw
jawhwa@nulljaw-hwa.com.tw
