經通國際智慧產權事務所

On September 6, 2007, following the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the filed request of amendment of invention patent certification number 115958 with the title of “Abrasive Tools with Patterned Grit Distribution and Method of Manufacture”, the Committee of Appeal of the Ministry of Economic Affairs’ and the Taipei High Administrative Court’s rejections against the subsequent appeals, the said decisions were upheld by the Supreme Administrative Court. In the said decision by the Supreme Administrative Court, the Court noted that the said request of amendment proposed to change the unit of measurement from micrometer employed in the original claims to millimeter; thus, the request of amendment of unit of measurement indicated in claim 25, 29 and 30 of the original claims was proposed to expand from ten to the minus six meter to ten to the minus three meter and resulted in actual change of scope of the disputed patent. Therefore, because actual change of scope of the disputed patent breached Article 67 of Patent Act, the Supreme Administrative Court rejected the said request of amendment.

The Supreme Administrative Court noted that according to the Patent Examination Standards, the request of amendment of an advertised or granted patent should be limited to be within the scope of the advertised/granted patent without actual change of the advertised/granted scope of patent, and should not be matters outside of the scope of the advertised/granted patent and included in the patent specification but result in actual change of the advertised/granted scope of patent. Thus, the appellant’s argument of that the requested amendment did not contain actual change of the scope of the granted patent because the requested amendment was included in the granted specification or drawings was deemed as incorrect application of the said Patent Examination Standards according to the Supreme Administrative Court. In addition, the thicknesses of the abrasive tools, matrix materials and thin chips indicated in claim 25, 29 and 30 of the original claims were proposed to expand from ten to the minus six meter to ten to the minus three meter. Therefore, even though the appellant established that the change of scope the disputed patent was due to correction of errors, because the said request of amendment breached Article 67 of Patent Act by causing actual change of scope of the disputed patent, the said argument was rejected by the Supreme Administrative Court. In addition, the appellant also provided the argument of that because the request of amendment proposed to amend the unit of measurement of matrix materials indicated in claim 25, 29 and 30 of the original claims from micrometer to millimeter, the embodiment with the amended unit of measurement required lower precision and lower level of technology. Thus, the said request of amendment essentially scaled down the scope of the disputed patent. However, the Supreme Administrative Court confirmed that the said amendment would expand the scope of the disputed patent because the unit of measurement indicated in claim 25, 29 and 30 of the original claims were amended from micrometer to millimeter.

Based on the reasons above, the Supreme Administrative Court confirmed the decisions by the TIPO, the Committee of Appeal and Taipei High Administrative Court to be lawful and rejected the appellant’s claims.

Organized and translated by Tony Chen

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