The Supreme Administrative Court rendered the 108-Pan-556 Decision of December 5, 2019 (hereinafter, the “Decision”), holding that interpretation on the scope of application claims in reference to embodiments and drawings in a specification should be based on the broadest reasonable interpretation at the time of application and should not be limited to embodiments or drawings to change the scope of patent claims as published.
According to the facts underlying this Decision, the Appellant applied to the Appellee for a utility patent on “illuminating and heat-dissipation devices.” After the Appellee’s formal examination, the patent was granted and published with the certificate of the patent issued (hereinafter, the “Patent-in-suit”). Later, the Intervenor filed an invalidation against the Patent-in-suit for its violation of Article 120 (to which Article 22, Paragraphs 1 and 2 apply mutatis mutandis) of the Patent Law (i.e., the patent law amended and promulgated on December 21, 2011 and going into effect on January 1, 2013). The Appellant filed the original of the amended application claims on October 26, 2016 (with Claims 2 and 6 deleted). In response, the Intervenor subsequently filed supplemental reasons for invalidation. After conducting an examination, the Appellee rendered a decision on invalidation, a disposition that stated “the Amendments of October 26, 2016 are approved, the invalidation against Claims 1, 3 through 5 is valid with such claims cancelled, and the invalidation against Claims 2 and 6 is rejected” (hereinafter, the “Original Disposition”). Dissatisfied with the portion of the Original Disposition which states “the invalidation against Claims 1, 3 through 5 is valid with such claims canceled,” the Appellant filed an administrative appeal. After a decision was rendered to reject the administrative appeal, the Appellant brought an administrative action with the Intellectual Property Court (hereinafter, the “Original Trial Court”). After the Original Trial Court asked ex officio the Intervenor to independently participate in the lawsuit involving the Appellee and after a decision was rendered to dismiss the lawsuit, the Appellant was still dissatisfied and appealed.
According to this Decision, Article 58, Paragraph of the Patent Law effective at the time of grant provides that the scope of an invention patent shall be based on the application claims, and when the scope of the application claims is interpreted, the specification and drawings may be referenced. The application claims generally define the implementation methods or embodiments set forth in the specification, and the drawings merely function to supplement the inadequacies in the text of the specification so that people skilled in the art can directly understand the technical features of the invention and their technical means according to the drawings. Therefore, when the scope of application claims is interpreted in reference to the embodiments and drawings of the specification, basically the interpretation should be conducted based on the broadest reasonable interpretation. Unless it is specifically stated in the specification that the contents of the application claims are limited to the embodiments and drawings, it is not appropriate to be constrained by the embodiments or drawings so as to change the published and objectively conveyed patent rights by amending the scope of the application claims.
It was further stated in this Decision that since the technical feature of the receiving slot is not defined in Claim 1 of the Patent-in-suit, the original decision, which concluded that the “same side” in Claim 1 of the Patent-in-suit should include installation on the inner or lower side in reference to the contents of the specification and drawings of the Patent-in-suit, was not erroneous and did not violate the above-mentioned principle for interpreting application claims. The gist of the appeal is certainly unacceptable for its assertion that since the specification of the Patent-in-suit was completely ignored when the original decision interpreted the scope of the application claims, the original decision was unlawful for failure to apply laws and regulations or inappropriate application of laws and regulations.