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Intellectual Property and Commercial Court

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2014 Min Zhuan Su Zi No. 14

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Decision No. 2014 Min Zhuan Su Zi No. 14
Date November 28. 2014
Decision Highlight

A.Article 26 paragraph 2 of the Patent Act stipulates that “The description shall . . . be sufficient for it to be understood and carried out by a person ordinarily skilled in the art.” It is sufficient that the description shall let a person ordinarily skilled in the art understand the content, manufacture or use of the invention, and solve problems and achieve anticipated results based on the description, claim and drawing without excessive experiments. This provision does not require that the description details the theory, basis or implementing way of the means for practicing the invention.

B.A claim shall be supported by the description. It means that each claim shall be based on the content disclosed by the description. In addition, a claim shall be supported by the description not only in form, but also in substance, which allows a person ordinarily skilled in the art to be able to directly or generally practice the invention based on the information disclosed in the description. Therefore, what a person ordinarily skilled in the art could understand or obtain by extension through a routine experiment or analysis, or through an obvious modification based on the disclosure, should be considered within the scope supported by the description.

C.An embodiment is an example of a better specific implementation. The number of embodiments is decided by the generalization level of features disclosed by claims, such as the generalization level of concatenation or the range of data. Whether the number of embodiments is appropriate shall take into consideration the nature of the invention, the technical field, and prior arts. In principle the number of embodiments shall be determined by whether the invention is disclosed sufficiently to be carried out and whether the claim can be supported by the description. For example, there is no need to narrate the implementation if the means of the invention is simple, or the description has met the element of fully disclosure for the invention to be carried out. When an embodiment is sufficient to support the means covered by the scope of the claim, the description can disclose only one embodiment. If the scope of the claim is too broad for a single embodiment to satisfy the element of fully disclosure, more than one different embodiment should be provided to support the scope of the claim.

Keywords

Enablement, Definiteness, Embodiment

Relevant statutes Article 26 paragraph 2, 3 of the Patent Act (amended and promulgated on February 6, 2003)
  • Release Date:2020-11-13
  • Update:2020-12-07
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