March 2018
Except when a description has clearly indicated that the patent claims should be limited to embodiments and drawings, the restrictive conditions of the description and drawings should not read on the patent claims (Taiwan)
2017.11.16
Jane Tsai
The Supreme Administrative Court rendered the 106-Pan-634 Decision of November 16, 2017 (hereinafter, the "Decision"), holding that except when a description has clearly indicated that the patent claims should be limited to embodiments and drawings, the restrictive conditions of the description and drawings should not read on the patent claims.
According to the facts underlying this Decision, the Plaintiff applied for a utility model patent (there were a total of 35 patent claims where claim 1 and claim 30 were independent claims and with the remainder being dependent claims) on "concrete aviation frame positioning device." An invalidation was subsequently filed, and the Intellectual Property Office rendered a disposition concluding that "claims 5, 7 and 8 shall be canceled since their invalidation was valid" (hereinafter, the "Original Disposition").Dissatisfied, the Plaintiff brought this administrative action.
Article 58, Paragraph 4 of the Patent Law effective when the patent was granted specifically provides: "The extent of the protection conferred by an invention patent shall be determined by the claims, and the description and drawing(s) may be considered as a reference when the claims are interpreted." This provision applies mutatis mutandis to a utility model patent under Article 120 of the same law. Whether the contents of claims are appropriate are particularly significant to the protection of the patentee's rights and the restrictions on public use. Therefore, an applicant's invention for which specific protection is sought should be specified in the claims. In addition, since literary expressions tend to have multiple meanings and to be misunderstood, when patent claims are constructed, the description and drawings may be considered along with an overall observation of the patent specification to ascertain the objectives, functions and efficacies of the invention. However, drawings function to supplement the literary deficiency of the description so that when reading the description, people skilled in the art of the invention may directly understand various technical features and the constituting technical means directly based on the drawings. However, patent claims generally define the manners of practicing the invention and embodiments set forth in the description. Unless the description has specifically indicated that the claims should be limited to embodiments and drawings, the restrictive conditions concerning the description and drawings should not read on the claims to change the scope of the objectively conveyed and publicly announced patent claims.
In this Decision, the claims of the patent-in-suit indicate: "A tip is formed at the other end of the screw which is screwed to the sleeve, and another sleeve is set up so that the tip of the screw is assembled in a hollow end of the other sleeve." However, the claim neither defined "tip" nor indicated that the two components – the tip and screw – can be constituted by one single "screw" component. The drawings of the patent-in-suit did contain the "tip" specified as the No. 32 component. However, there was no evidence to prove that this was a bolt as sold in the market. In addition, the claims of the patent-in-suit did not define that Tip 32 and Screw 3 can be a "bolt." Therefore, the restrictive conditions of the drawing should not directly read on the claims of the patent-in-suit. Hence, the Plaintiff's appeal was dismissed and the original decision against the Plaintiff was upheld since the Plaintiff's assertion that the patent-in-suit had inventive steps because the drawings could prove that the patent-in-suit could save manufacturing and usage costs through its Screw 3 and Tip 32 implemented by technical means typical of ordinary bolts sold in the market was not acceptable.
Jane Tsai
The Supreme Administrative Court rendered the 106-Pan-634 Decision of November 16, 2017 (hereinafter, the "Decision"), holding that except when a description has clearly indicated that the patent claims should be limited to embodiments and drawings, the restrictive conditions of the description and drawings should not read on the patent claims.
According to the facts underlying this Decision, the Plaintiff applied for a utility model patent (there were a total of 35 patent claims where claim 1 and claim 30 were independent claims and with the remainder being dependent claims) on "concrete aviation frame positioning device." An invalidation was subsequently filed, and the Intellectual Property Office rendered a disposition concluding that "claims 5, 7 and 8 shall be canceled since their invalidation was valid" (hereinafter, the "Original Disposition").Dissatisfied, the Plaintiff brought this administrative action.
Article 58, Paragraph 4 of the Patent Law effective when the patent was granted specifically provides: "The extent of the protection conferred by an invention patent shall be determined by the claims, and the description and drawing(s) may be considered as a reference when the claims are interpreted." This provision applies mutatis mutandis to a utility model patent under Article 120 of the same law. Whether the contents of claims are appropriate are particularly significant to the protection of the patentee's rights and the restrictions on public use. Therefore, an applicant's invention for which specific protection is sought should be specified in the claims. In addition, since literary expressions tend to have multiple meanings and to be misunderstood, when patent claims are constructed, the description and drawings may be considered along with an overall observation of the patent specification to ascertain the objectives, functions and efficacies of the invention. However, drawings function to supplement the literary deficiency of the description so that when reading the description, people skilled in the art of the invention may directly understand various technical features and the constituting technical means directly based on the drawings. However, patent claims generally define the manners of practicing the invention and embodiments set forth in the description. Unless the description has specifically indicated that the claims should be limited to embodiments and drawings, the restrictive conditions concerning the description and drawings should not read on the claims to change the scope of the objectively conveyed and publicly announced patent claims.
In this Decision, the claims of the patent-in-suit indicate: "A tip is formed at the other end of the screw which is screwed to the sleeve, and another sleeve is set up so that the tip of the screw is assembled in a hollow end of the other sleeve." However, the claim neither defined "tip" nor indicated that the two components – the tip and screw – can be constituted by one single "screw" component. The drawings of the patent-in-suit did contain the "tip" specified as the No. 32 component. However, there was no evidence to prove that this was a bolt as sold in the market. In addition, the claims of the patent-in-suit did not define that Tip 32 and Screw 3 can be a "bolt." Therefore, the restrictive conditions of the drawing should not directly read on the claims of the patent-in-suit. Hence, the Plaintiff's appeal was dismissed and the original decision against the Plaintiff was upheld since the Plaintiff's assertion that the patent-in-suit had inventive steps because the drawings could prove that the patent-in-suit could save manufacturing and usage costs through its Screw 3 and Tip 32 implemented by technical means typical of ordinary bolts sold in the market was not acceptable.
