Does rewriting dependent claim as independent claim change scope of patent?

In several previous decisions the Intellectual Property Court has ruled that, where an independent claim has been deleted and its dependent claim is changed to an independent claim, such amendment is permitted since it is made only to the form of a claim and does not substantially change the scope of the patent. For example, in Case 2010-HCS-68 the IP court held that changing an existing dependent claim to an independent clam did not change the scope of the patent, and thus allowed the amendment.

In this regard, on February 9 2011 the Taiwan Intellectual Property Office promulgated a draft amendment to the Patent Examination Guidelines (Chapter 6, "Amendment" under Section 2). Point 2.4.2 – "Circumstances of Substantial Expansion or Change of a Patent Claim" – includes a new condition which stipulates that where an amendment has been made by deleting an independent claim and changing a dependent claim to an independent claim, thereby changing the problem that the technical measure of other dependent claims of the deleted claim aims to solve, even if such technical measure is disclosed in the specification or drawings, that amendment is considered to have caused substantial change to the scope of the patent. The draft further provides examples of the criteria under Point 2.7.3.1, entitled "Deleting Independent Claim and Rewriting Dependent Claim as Independent Claim".

The draft further elaborates the opinion in the above-mentioned IP court judgments by stating that if such an amendment changes the problem to be solved by other unamended dependent claims, it is considered to have substantially changed the scope of the patent.

For further information on this topic please contact Katherine Juang at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300), fax (+886 2 2713 3966) or email ([email protected]).