The Supreme Administrative Court rendered the 108-Pan-100 Decision of March 8, 2019 (hereinafter, the “Decision”), holding that unless a specification has clearly indicated that the patent claims should be limited to embodiments and drawings, the restrictive conditions of the specification and drawings should not read on the patent claims.
According to the facts underlying this Decision, Appellant A applied to the Appellee for an invention patent on “Store-to-Store Delivery Management Method and System” on May 5, 2008 (there were a total of patent claims with Claim 1 and 7 as independent claims and the rest dependent claims). The Appellee subsequently granted the patent-in-suit. Appellant B filed an invalidation against it. The Appellee concluded, as a result of its examination, that Claims 1 and 6 did not meet the definition of invention and Claims 1 through 6 did not have inventive steps, and rendered a disposition (hereinafter, the “Original Disposition”) finding that “the invalidation against Claims 1 through 6 is valid and, therefore, such claims shall be revoked with the invalidation against Claims 7 through 10 dismissed.” Dissatisfied, both Appellant A and Appellant B brought an administrative action.
According to the Decision, the scope of an invention patent shall be based on the claims in the patent application. When the claims in a patent application are constructed, the specification and drawings may also be considered, as specifically stipulated under Article 58, Paragraph 4 of the Patent Law effective at the time of the patent grant. Therefore, when patent claims are constructed, the specification and drawings may be considered in order to understand the purposes, functions and effects of the invention. However, the claims in the patent application generally define the practice methods or embodiments set forth in the specification. Unless a specification has clearly indicated that the patent claims should be limited to embodiments and drawings, the restrictive conditions of the specification and drawings should not read on the patent claims to change the scope of the patent as disclosed and objectively conveyed by the patent claims.
It was further pointed out in this Decision that the wording of Claim 7 of the patent-in-suit with respect to the “delivery information integration platform” is “a delivery information integration platform connected with said information management platform with a process to integrate information relating to the integrated delivery process and track the flow of various delivery items.” This did not limit the information relating to the integrated delivery process and the flow of the delivery items as tracked. In addition, the last line from the bottom of Page 7 through the third line on Page 8 in the specification of the patent-in-suit did not specifically indicate the delivery process information integrated into the “delivery information integration platform” under the patent-in-suit. In addition, the invention in the patent-in-suit sought to address the issue of a scarcity of service locations for logistics services covered in prior arts as well as the issue of inconvenient pickup by the recipients. In contrast, the technical features of the patent-in-suit were short distances with plenty of service locations and 24-hour services. Therefore, convenient logistics services could be provided. In addition, since existing equipment is used, the function and efficacy of reducing hardware system deployment cost can be achieved. Based on the invention purposes, functions and efficacy of the invention in the patent-in-suit and the fact that there was no restriction on the information integrated in the “delivery information integration system,” the original decision, which held that the “delivery information integration system” in Claim 7 of the patent-in-suit had the function of “controlling the information in the entire distribution process,” obviously read the restrictive conditions in the specification of the patent-in-suit on the patent claims. Based on the above explanation, this violated Article 58, Paragraph 4 of the Patent Law at the time of the patent grant. Since the original decision was unlawful for its inappropriate application of laws and regulations, it was reversed and remanded.