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A patent specification shall be clear and provide full disclosure, and claims shall be written in a clear and concise manner and be supported by the specification. This patentability requirement is expressly stipulated in Article 26 of the Patent Act of Taiwan and is generally called the requirement of "definiteness." In practice, however, there is frequent debate over the manner in which an invention patent application is to be drafted and what level of detail is sufficient for the disclosure of a patent specification and claims to satisfy said requirement.
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Paragraph 1 of Article 26 of the Patent Act provides a substantial standard of definiteness by requiring the specification to be "sufficient to be understood and carried out by a person of ordinary skill in the art." Paragraph 4 of the same Article, however, opens the door to potentially conflicting criteria by authorizing the competent authority to stipulate enforcement rules on the manner of disclosure to be employed in the specification, claims, etc. Accordingly, if a patent specification or claims are unsatisfactorily written and fail to comply with relevant formality regulations under the Enforcement Rules of the Patent Act, uncertainty arises as to whether such a patent case can directly be determined as lacking "definiteness" and consequently lacking patentability regardless of assessment under the above-mentioned substantial standard.
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The Supreme Administrative Court adopted a negative stance to this question in its judgment made on 6 December 2012 (No. 2012-Pan-1031). According to this judgment, the substantial aspects shall be held as the core factors in determining the definiteness requirement; that is, the decision shall be made based on the perspective of "persons with ordinary skill in the art." If such persons can realize the claimed scope of the patent by reading its specification and claims, then the contents of the specification meet the statutory requirement of definiteness. Moreover, to determine that a patent is invalid due to lack of definiteness, such persons skilled in the art must have "made reasonable effort" but still have been unable to understand the scope of the patent. This standard is intended to protect a patent from being regarded as invalid simply for being written in an unsatisfactory way.
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In view of the Supreme Administrative Court's above holding, the authority is required to "make reasonable effort" to comprehend and realize the contents of the specification when reviewing the "definiteness" of a patent; it shall not rely solely on formalistic criteria. Indeed, considering a patent's substantive merits instead of evaluating based primarily on quality of writing affords protection more commensurate with the contribution of a patent owner's invention or creation.
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In a later judgment No. 2012-Shin Juang Su-28 made on 24 January 2013, the IP Court reinforced the principle that the substantive rather than formal standards should be the primary consideration in determination of "definiteness." It ruled that: Although the competent authority has stipulated Enforcement Rules of the Patent Act as well as Patent Examination Guidelines to regulate how to write the description, drawings and claims of a patent, they are mainly requirements about forms to be employed and items to be described; the purpose of such formality requirements is to urge patent applicants to write in a particular way, thereby to aid them in more readily meeting the substantive requirements of the Patent Act. As to the issue of how to express the technical concepts of the claimed invention in words, it is still to be decided by the applicant himself. The Patent Act does not intend to require the applicant to employ purely logical language as stipulated by the relevant regulations on formality requirements or to describe the whole structure of an invention embodiment segment by segment; rather, determination of definiteness shall be made based on the perspective of persons skilled in the art. Otherwise, the spirit of patent protection, i.e., protection of technical concepts, will be inappropriately constrained, which would lead to protection merely of the concrete object of an embodiment. Such a consequence is obviously inconsistent with the purpose of the modern patent system.
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This judgment was ultimately sustained by Supreme Administrative Court judgment No. 2013-Pan-355 rendered on 7 June 2013.
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In practice, it's not uncommon for a cancellation petitioner to challenge the definiteness of a patent based on violation of the regulations governing the format of a specification stipulated in the Enforcement Rules of Patent Act. According to the aforementioned opinions of the Supreme Administrative Court and the IP Court, if the petitioner fails to provide, along with his assertions mentioned above, substantial reasons and specifically explain why persons skilled in the art cannot understand and carry out the invention of the disputed patent despite making reasonable efforts, he may face difficulty persuading the court to accept his claim.
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