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Intellectual Property and Commercial Court

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2008 Min Zhuan Su No. 9

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Decision No. 2008 Min Zhuan Su No. 9
Date May 12, 2009
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Article 26, Paragraph 2 of the Patent Act provides“to enable person skilled in the art to understand the contents of and to be able to practice the said invention.” This indicates the disclosure in the patent specification should enable the person of ordinary skill in the art to understand without undue experimentation the content of the claimed invention, to make or use it to solve problems, and to produce intended result. All of the above should be achieved on the basis of the specification, claims and drawings, all three as a whole, taking into account the common knowledge in the field at the filing date. Page 5 of the specification of the disputed utility model patent provides the description of the prior art. In describing how to accomplish the claimed utility model, Pages 6 and 7 of the specification provides better practices or embodiments to demonstrate technical approaches to solve the intended problem. In depicting the embodiments, the specification also identify essential technical features that are recited in the claims. The disclosure in the specification should be sufficient for enabling the person of ordinary skill in the art to understand the content of the claimed invention without undue experimentation. In short, the specification of the disputed patent already discloses analogous prior art, purposes of the invention, technical content, specialty and functionality. It is definite and fully disclosed, enough to enable persons having ordinary skill in the art to understand and to carry out the invention. The patent is therefore in compliance with Article 108 and Article 26 Paragraph 2 of the Patent Act. On February 23, 2009, both parties joined an inspection of the disputed utility model patent with the technical examiner of this Court and the patent examiner of the Intellectual Property Office. During this inspection, a product made in accord with the claimed utility model patent was submitted to prove the disputed patent is capable of industrial manufacturing or utility. Furthermore, the defendant made a product according to Claim 2 & 3 of the disputed patent at the scene of the inspection. Though in the slicing test the patented product demonstrated weaker slicing-proof function than the tetron/cotton fabric product, such test was only purported to compare the slicing-proof features of the two tested products. The result of test was therefore not sufficient to prove that the disputed patent fail to meet the enablement requirement.

Related Provision Art. 26, Para. 2; Art. 94, Para. 4; Art. 108
  • Release Date:2020-11-13
  • Update:2020-12-07
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