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Intellectual Property and Commercial Court

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2012 Xing Zhuan Su Zi No.18

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Decision No. 2012 Xing Zhuan Su Zi No.18
Date August 7, 2012
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When an independent claim of a patent or utility model registration is written in a two-part form, the pre-characterizing portion shall include the preamble of the claimed patent and the necessary technical features shared with prior arts, and the characterizing portion shall adopt the expression "which is improved in that" or the like to identify the necessary technical features distinguishable from the prior arts. The characterizing portion should be combined with the technical features stated in the pre-characterizing portion while interpreting an independent claim, which is stipulated in Article 19 of the Enforcement Rule of the Patent Act. Further, according to Article 106, Paragraph 2 of the Patent Act, “The scope of the protection conferred by a utility model registration shall be determined by the claim(s) stated in the specification, and the description and drawing(s) may be considered as a reference when interpreting the claim(s). The abstract shall not be used for the purpose of interpreting claim(s).” Accordingly, the Taiwan Patent Act adopts the compromised limitation principle of the academic theory (standing between the centralized limitation principle and the peripheral limitation principle) to interpret the scope of protection conferred by a patent right; that is, the scope protected by a patent right is to be determined in accordance with the content of the patent claim(s), and the specification and the drawing(s) may be consulted to interpret the extent of the patent claim(s). As a result, the scope of a patent right shall be accorded directly upon what has been stated in the patent claim(s), and the patent claim(s) trumps whenever there is any discrepancy between the disclosures of the patent (or utility model registration) claim(s) and the description of the claimed invention (or utility model) or the drawing(s); no limitation(s) shall be allowed to be added into or deleted from the claim(s) by way of the content disclosed in the description of the claimed invention (or utility model) or the drawing(s), so as to refrain from any alteration of the patent right extent objectively projected to the outside world by the published claim(s), and thereby to honor the legitimate expectation by the people. Therefore, if an independent claim of a patent (or utility model registration) is written in a two-part form, the characterizing portion thereof shall clearly disclose the necessary technical features of the claimed invention or creation for solving the declared problem(s). However, if the characterizing portion does not further define the necessary technical features distinguishable from the prior arts against the technical features stated in the pre-characterizing portion, the technical features stated in the pre-characterizing portion shall be thereby presumed the same as the prior arts of the invention (or utility model), and the assertion that there is certain difference between the technical features stated in the pre-characterizing portion and the prior arts by way of the content disclosed in the description of the claimed invention (or utility model) or the drawing(s) is thus not allowable, in order to prevent the objective published claims from being altered.

Relevant statutes Article 106, Paragraph 2 of the Patent Act, Article 19 of the Enforcement Rule of the Patent Act
  • Release Date:2020-11-13
  • Update:2020-12-07
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