Jay Kao, one of North America Intellectual Property Corp’s patent agents attended the recent 2017 International Symposium on Patent Strategy and Practice, hosted by the Taiwan Patent Attorneys Association and National Taiwan University of Technology. The conference also featured visiting speakers from the UK’s Chartered Institute of Patent Attorneys. Jay gave us a rundown below of his takeaway from the conference and on the news that patent filings with the Taiwan Intellectual Property Office (TIPO) continued their downward trend in 2016.
An account of our interview with Jay Kao is as below:
IP Observer: What did you think were the most important takeaways from the conference? Jay Kao: The presentation by Nicholas Malden [Chartered Institute of Patent Attorneys] on what patent attorneys should look out for in drafting patent descriptions in Japan, China, Europe and the US was very interesting. When it comes to European applications, whether in my own experience or as he mentioned in his talk, when you’re making changes in response to an office action, it’s very easy to cross the line into your changes constituting new matter. This is quite different from how you approach changes to a US application. He gave a specific example on this. If there is a claim to a device which comprises Component A + Component B, and the description says that A can be C, D, or E, and that B can be F, G, or H, it’s often impossible to amend the claims to a device in which Component A is D and Component B is G. This is what Malden termed “the Article 123(2) / (3) EPC trap”, in that if an amendment is made before grant which adds subject matter and limits the scope of the claims, the amendment is illegal (Article 123(2) EPC), but cannot be removed if this would broaden the claim scope (Article 123(3) EPC). This means that you have to specifically mention any combinations you can foresee as useful. You can’t draft your claims as broadly as you would for the US, as the US allows you to make substantive amendments, whereas Europe does not. In my experience it’s harder to get to the grant stage with European patent rights. You have to put more detail into the description for European applications, including how the invention will be applied. The US and Japan are the most flexible in this regard, whereas China is slightly more rigid, but less so than Europe. Figure 1: NAIP patent attorney Jay Kao Photo by Conor Stuart For applications in all four places it is also best to write as little in terms of prior art. If you write too much, then it can be used against your application as applicant admitted prior art as grounds for rejection. Another point that was brought up at the conference was the difference in design patents between the UK and Taiwan. The UK designs are very different in that they don’t require a substantive examination. I think that Taiwan is the only country to require a substantive examination for design patents, as most countries only require a formality examination.【unfinished; for further reading: IP Observer 012: Interview: International Symposium on Patent Strategy and Practice】