|
Paragraph 8, Article 18 of the old Enforcement Rules of the Patent Act amended on 1 July 2004 stipulated that: "For an invention characterized in combining plural technical features, the claims may be presented in means-plus-function or step-plus-function language. Whenever an interpretation of claims is made, it shall contain the structure, material, or acts or equivalent scope thereof corresponding to the functions disclosed in the description of an invention.." This provision is identical to Paragraph 4, Article 19 of the new Enforcement Rules of the Patent Act implemented on 1 January 2013. Based on the aforementioned provision, some considered that for a patent with claims written in means-plus-function language, if "corresponding structure, material, or act cannot be found" in the patent specification, then it fails to meet the requirement of "definiteness" stipulated in Article 26 of the old Patent Act ("The description of invention shall contain a sufficiently clear and complete disclosure of contents of the invention so as to enable persons skilled in the art to understand the contents thereof and to practice said invention;" this also appears in Paragraph 1, Article 26 of the new Patent Act). The Intellectual Property Court (IP Court) adopted this view in a civil judgment rendered in January 2010 (Judgment No. 2009-Min Juan Shan-19).
|
| |
|
After appeal by the patent owner, the IP Court's judgment was reversed and remanded by the Supreme Court on 31 March 2011 by Judgment No. 2011-Tai Shan-480. However, the IP Court subsequently ruled in its Judgment No. 2011-Min Juan Shan Gen (1)-5 that, based on the same reasons, the patent claims of the disputed case were in means-plus-function language and violated the rule of "definiteness" because corresponding structures and materials could not be found in the specification. The patent owner appealed again, and the above judgment was reversed and remanded by the Supreme Court in October 2012 by Judgment No. 2012-Tai Shan-1673. Although the Supreme Court did not elaborate much on the particular issues of "means-plus-function language" and "definiteness," it will be worth observing how the IP Court handles these issues in the second remand procedure.
|
| |
|
Changes in the IP Court's position on these issues may be discerned in an administrative judgment rendered on 24 January 2013 for another patent dispute. In Judgment No. 2012-Shin Juan Su-28, the IP Court overturned the cancellation petitioner's argument that "the disputed patent lacked 'definiteness' as its claims were written in means-plus-function language but corresponding structure and material could not be found in the specification" and confirmed the validity of the disputed patent. The IP Court's opinions can be summarized as follows:
|
| |
|
●
|
Regarding how the specification, drawings and claims are to be drafted, what the Enforcement Rules of the Patent Act and the Patent Examination Guidelines stipulate are mainly requirements about format and the items required to be denoted; how the technical ideas the applicant desires to protect are actually expressed is up to the applicant. Determination as to whether the patent complies with the requirements for "full disclosure" or "definiteness" should be based on whether the words employed by the applicant in the description of invention enable "persons with ordinary knowledge in the art" to put the invention into practice, and whether the claims are clear and well supported. The Patent Act does not require the applicant to describe the claimed invention in purely logical language, or explain in great detail the overall structure of each embodiment. Otherwise, the legislative spirit of the Patent Act, i.e., protecting the inventor's technical concept, will be subject to improper limitation; what is more, the Patent Act would protect only the concrete embodiments. Such consequences would be inconsistent with the contemporary patent system's emphasis on protecting the technical concepts presented in words.
|
| |
|
●
|
The drafting methods for the description of invention or claims described in the Enforcement Rules of the Patent Act and the Patent Examination Guidelines stipulated by the Intellectual Property Office (IPO) are intended to serve simply as reference, guidance and recommendations for the applicant's benefit. They are merely administratively instructional in nature. Paragraph 8, Article 18 of the Enforcement Rules of the Patent Act amended and implemented in 2004 provides the drafting methods for means-plus-function and step-plus-function language: "For an invention characterized in combining plural technical features, the claims may be presented in means-plus-function or step-plus-function language. Whenever an interpretation of claims is made, it shall contain the structure, material, or acts or equivalent scope thereof corresponding to the functions disclosed in the description of an invention." The IPO instructs patent applicants with these provisions that if he/she drafts claims in this manner, the definiteness and the full disclosure requirements stipulated in Patent Act may be met more readily if the structure, material, or acts or equivalent scope corresponding to the said function are depicted in the description of invention. It doesn't mean that the definiteness and the full disclosure requirements stipulated in the Patent Act can only be met if the structure, material, or acts or equivalent scope corresponding to the said function is depicted when means-plus-function language is used. Hence, even if the claims are interpreted as written in means-plus-function language, whether or not meet the requirements for definiteness or full disclosure should still be determined from the perspective of persons with ordinary knowledge in the art.
|
| |
|
●
|
Since the description of invention of the disputed patent has clearly described the disputed patent's technical contents, the requirements of definiteness and full disclosure have been met. Furthermore, as the elements of the independent claims are all devices, and the functions of each element and operational relationship between each element have been concretely defined, the definiteness requirement has been met, too. In addition, since the manner of disclosure employed by the disputed patent's description of invention, claims and drawings did not violate any applicable regulations regarding the disclosure formats stipulated in the Enforcement Rules of Patent Act, the disputed patent has met the provisions of the Patent Act as well.
|
| |
|
The technical field and contents of the aforementioned Judgment No. 2012-Shin Juan Su-28 are different from those of the Judgment No. 2009-Min Juan Shan-19 previously discussed; hence, the result of each judgment should not be presumed to generally apply to another. Nevertheless, in these cases involving the same legal argument, the IP Court did take different positions and express different opinions in terms of interpretation and application of law. It will be worth noting what opinion is given by the IP Court if another case involving similar arguments is filed in the future.
|
