Facts
IP Court
Appeal
Supreme Administrative Court
Comment
On 27 June 2012 Application 101122910 for Taiwan Invention Patent I499170 (the patent at dispute) – covering a "bicycle dynamo, bicycle lighting system and bicycle" – was filed with the Taiwan Intellectual Property Office (TIPO). The patentee claimed priorities of its earlier patent applications filed on 1 July 2011 and 20 October 2011 with the German Patent and Trademark Office.
On 12 June 2017 the patentee filed a post-grant amendment request with the TIPO on the grounds that there were errors in the description and claims of the patent at dispute. The patentee claimed that the term "DC" in the subject matter of Claim 1, "a bicycle DC generator", was an error that had to be corrected and requested that the subject matter of Claim 1 be corrected to "a bicycle AC generator".
Upon the examination of the post-grant amendment, the TIPO held that the corrected version, dated 12 June 2017, violated items 3 and 4 of article 67(1) of the Patent Act. Therefore, the TIPO rejected the amendment request.
Not satisfied with the TIPO's decision, the patentee filed an administrative appeal, which was later dismissed. The patentee consequently filed an administrative lawsuit, which was again dismissed in an IP Court administrative judgment (the original judgment).(1) The patentee lodged a further appeal against the original judgment but this was dismissed finally and bindingly in an administrative judgment rendered by the Supreme Administrative Court (the appeal judgment).(2)
According to the IP Court's original judgment, when reviewing the description, claims and drawings of the patent at dispute, any person that was ordinarily skilled in the art would not easily detect any obvious errors sufficient for them to consider it necessary to correct "DC generator" to "AC generator". The IP Court held that as it is well known to people who have ordinary skill in the art that "DC generator" and "AC generator" fundamentally belong to two different power generation systems and that the two terms each have a different meaning, the post-grant amendment was not a correction of errors. The IP Court further indicated in the original judgment that the difference between an AC generator and a DC generator lies in a "rectifying device", which can be added to an AC generator to make it a DC generator.
In the appeal, the patentee claimed that the subject matter of Claim 1, "a bicycle DC generator", was an obvious error that had been unreasonably recorded since the actual electricity generated was alternating current with regard to the components of Claim 1. The patentee further claimed that the patent at dispute had explicitly recited the "bicycle lighting system" with the "rectifying device" in Claim 16, which the patentee claimed was sufficient to prove that Claim 1 originally sought to protect the AC generator of the bicycle. Therefore, the patentee argued that the subject matter of Claim 1, "a bicycle DC generator," was an obvious error that had been unreasonably recorded.
Agreeing with the IP Court's opinion that the terms "DC generator" and "AC generator" have different meanings, the Supreme Administrative Court recognised that correcting "DC generator" to "AC generator" would substantially alter the scope of the claims as published. The Supreme Administrative Court further indicated in the appeal judgment that while it was true that Claim 16 contained the phrase "a rectifying device located behind a coil (7), which serves to rectify the current from the coil (7)", Claim 16, which depended on Claim 13, was about a bicycle lighting system. Therefore, the Supreme Administrative Court held that the mere addition of a rectifying device was insufficient to justify the argument that the DC generator contained in Claim 1 was an error unreasonably recorded.
As the difference between AC and DC can be distinguished by anybody with a basic understanding of electricity, it was difficult for the competent authority and courts to recognise the patentee's amendment request to correct "DC generator" to "AC generator" as an act that would not substantially enlarge or alter the scope of the claims as published.
In this case, the correction of translation errors may be considered as an alternative ground for a further request. When the application of the patent at dispute was initially filed on 27 June 2012, the application documents were in German. The term, "a bicycle DC generator", was translated from the term "Fahrraddynamo", based on the German counterpart of Claim 1. However, the term "Fahrraddynamo" refers to "a general bicycle generator" and does not limit the characteristics of such a generator to either AC or DC. The patentee could request a post-grant amendment on the ground of the correction of translation errors and claim that such an amendment would not substantially alter the scope of the claims as it would simply be a terminological adjustment to the preamble without affecting either the body of the claim or the embodiments contained in the description. Therefore, the patentee could claim that the adjusted preamble would not alter the "invention purpose" of the original claim(s). If the subject matter of Claim 1 of the patent at dispute could be successfully corrected to "a bicycle generator", the scope of Claim 1 could cover both DC and AC generators, which would not only be in line with what was recorded in the German specification, but also closer to the patentee's original intention in the description and claims of the original patent application.
For further information on this topic please contact Hsiu-Ru Chien or Jason Chuang at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email ([email protected] or [email protected]). The Lee and Li Attorneys at Law website can be accessed at www.leeandli.com.
Endnotes