Empirical Study of Amendment to Patent Claims and Notification Procedure in Taiwan

• Main Author: 林博智
• Other Authors: Liu, Shang-Jyh
• Format: Others
• Language: zh-TW
• Published: 2010
• Online Access: http://ndltd.ncl.edu.tw/handle/99391270149155673117

碩士 === 國立交通大學 === 管理學院碩士在職專班科技法律組 === 98 === When a patentee intends to fight against prior arts, protecting his/her patent right in a cancellation action, he/her usually files a claim amendment to narrow down the claim scope to avoid overlapping with the prior arts. Because granting a request for claim amendment or not significantly affect the decision of the cancellation action, both parties involving the cancellation action must pay full attention on this procedure. However, although the rules about claim amendment are stipulated in Article 64 of Patent Law and Chapter 6, Paragraph 2 of Patent Examination Guideline, such rules are still ambiguous and leave a lot of grey zones to be filled. For example, a frequently argued question is the definition of substantially changing the claim scope. In this thesis, the author tries to balance the interests between the public who trusts the public notice of an issued patent and the patentee. In empirical studies, the author analyzes the recent decisions of Taipei Administrative High Court and Intellectual Property Court, and cancellation actions of Intellectual Property Office. Based on these statistic data, the author intends to disclose the discrepancy of current patent practice, and find out a principle of equity to balance the interests of both parties in the cancellation action.