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Intellectual Property and Commercial Court



Decision No. 2008-Xing-Zhuan-Su-34
Date December 11, 2008
Decision Highlight

When more than two claims in a patent application, the patent examination authority shall review the inventive step of each and every claim included in the same application. Because the creation of claimed inventions is not easy, the patent examination authority shall review all claims in every detail in order to fulfill its examination duty and to increase the probability of patent approval. Each independent claim, composed of essential technical contents and features of the claimed invention, and its dependent claims shall be reviewed separately. Therefore, if the invention described in an independent claim fulfills the inventive-step requirement, the inventions claimed in its dependent claims will also survive the same requirement, since dependent claims comprise all technical contents and features of the corresponding independent claim. In contrast, if an independent claim fails the inventive-step requirement, the corresponding dependent claims still have to be reviewed for the same requirement. After claim-by-claim review, in light of the claimed patent as a whole, the patent examination authority shall decide an application in its entirety, not allowed to grant part of the claims but reject the others. That is, when a patent application was filed, the applicant submitted a specification to support the technical contents of all claims and requested the patent examination authority to review the overall technical features of the claims. Although claims are reviewed separately and possibly only some of them are held patentable, such claims cannot be divided from other unpatentable claims in the same application. As long as the patent examination authority has notified the applicant the possible rejection according to Article 46, Clause 2 of the Patent Act, if the applicant chooses not to amend these claims to redress the patentability issue, this application at barshall be rejected in its totality.

Related Provision Article 46, Paragraph 2 of the Patent Act
  • Release Date:2020-11-13
  • Update:2020-12-07