News
News
2016-08-11
Amendment After Patent Filing and Quality of Patent Sepcification
Amendment After Patent Filing and Quality of Patent Sepcification
Recently, in addition to having patent applications filed in US and Japan, applicants from Taiwan would further file patent applications in many other countries based on the manufacturing or selling demands. However, since the examination condition varies from country to country, the applicants are required to make amendments to the specification or the claims in order to expedite the allowance of the patent application. In addition, the examiners of each country have different views and inconsistent standards with respect to the claim amendments, as such, some examiners would still strictly consider that the claims cannot be amended unless such amendments are specifically described in the specification.
For example, a specification discloses that an amount of component A is 10 to 100, with embodiments that further limit four points such as 10, 50, 80 and 100, in which and claim one recites a range of 10 to 100. Upon examination, if a citation discloses a range of value 95, such a claim might be rejected as a result of non-disclosure. In response to this rejection, the applicant may amend the range recited in the claim to read “10 to 80.” However, for an examiner who insists that the amended text should be clearly described in the specification, the range of values between “10-80” not disclosed in the specification may not be allowed.
As a result, the range of the allowed claim is merely the indication of values of several single points which are insubstantial. In fact, the disclosure of the specification in this case is reasonable, and should not be considered as poorly done due to the nature of the case. Regarding evaluating the quality of the specification, the claims should embody the invention and appropriately extend the protection scope as much as possible, and the drafting of the specification should take the potential amendments into consideration and incorporate the literal basis that can support necessary amendments in the specification. Therefore, the invisible quality and value of the specification can be improved by means of reviewing, proofreading and amending the texts before filing.
Recently, in addition to having patent applications filed in US and Japan, applicants from Taiwan would further file patent applications in many other countries based on the manufacturing or selling demands. However, since the examination condition varies from country to country, the applicants are required to make amendments to the specification or the claims in order to expedite the allowance of the patent application. In addition, the examiners of each country have different views and inconsistent standards with respect to the claim amendments, as such, some examiners would still strictly consider that the claims cannot be amended unless such amendments are specifically described in the specification.
For example, a specification discloses that an amount of component A is 10 to 100, with embodiments that further limit four points such as 10, 50, 80 and 100, in which and claim one recites a range of 10 to 100. Upon examination, if a citation discloses a range of value 95, such a claim might be rejected as a result of non-disclosure. In response to this rejection, the applicant may amend the range recited in the claim to read “10 to 80.” However, for an examiner who insists that the amended text should be clearly described in the specification, the range of values between “10-80” not disclosed in the specification may not be allowed.
As a result, the range of the allowed claim is merely the indication of values of several single points which are insubstantial. In fact, the disclosure of the specification in this case is reasonable, and should not be considered as poorly done due to the nature of the case. Regarding evaluating the quality of the specification, the claims should embody the invention and appropriately extend the protection scope as much as possible, and the drafting of the specification should take the potential amendments into consideration and incorporate the literal basis that can support necessary amendments in the specification. Therefore, the invisible quality and value of the specification can be improved by means of reviewing, proofreading and amending the texts before filing.
