Claims and Determining Scope of Protection

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1 Introduction 2014 APAA Patents Committee Questionnaire Claims and Determining Scope of Protection for Taiwan Group Many practitioners and users of the patent system believe that it is a fairly universal and straightforward rule that the scope of a patent is determined by the claims. However, based on the previous year s questionnaire results, the answer may not be so simple. The results of past questionnaires (2012 & 2013) regarding standards for inventive step, emphasise to the Patents Committee that rules regarding construction vary quite dramatically among APAA countries. In particular, results of the hypothetical infringement and validity example highlighted substantial differences in how claims are interpreted in different jurisdictions. This year, we will attempt to identify the similarities and differences in the rules and practices concerning claim construction in various APAA countries, and the role claims play in defining the invention. Your answers to our questionnaire will be important in understanding how various jurisdictions treat this basic and fundamental issue. Claims are grouped as follows: Group A Claim interpretation rules applied after grant Group B Claim interpretation rules applied during prosecution Group C Formality requirements for claims applied both before and after grant Please feel free to include a few lines of comments if you believe clarification is necessary. A. Relationship between the Claim and the Scope of Protection 1 A.1 Is the claim viewed as the main instrument for determining the scope of a patented invention? 1 Please note that question number A and its subordinate questions concern rules and practices after grant of a patent. (Questions concerning rules and practices before grant, particularly during examination of a pending patent application, are set forth in question number B and its subordinate questions.) 1

2 Answer the question below if the answer to question A.1 above is no. A.2 If claims are not the main instrument for determining the scope of a patented invention, then what is? Answer the questions below if the answer to question A.1 above is yes. A.3 Is there a statutory definition and/or case law establishing the role that a claim has in determining the scope of a patented invention? Statutory definition Case law Yes ( ) No ( ) Explanatory comments Paragragh 4, Article 58 of Taiwan Patent Act provides the following: The extent of the protection conferred by an invention patent shall be determined by the claim(s). A.4 Should the detailed description of the invention in the specification ( description ) be referenced when determining the scope of a patented invention? Yes, always ( ) Yes, but on a case-by-case basis ( ) No ( ) No clear rule ( ) A.4.1 What is the primary authority forming the basis of your answer to question A.4 above? Statute ( ) Court Precedents ( ) Other ( ) Please describe the relevant contents in the authority. Paragragh 4, Article 58 of Taiwan Patent Act provides the following: The extent of the protection conferred by an invention patent shall be determined by the claim(s), and the description and drawing(s) may be considered as a reference when interpreting the claim(s). 2

3 Please answer the question below if the description should always be referenced. A.4.2 If the specification of the invention is described as including certain essential elements (e.g. for functioning properly and achieving the objective) are those essential elements part of the invention even though they are not defined in the claim. Yes ( ) No ( ) No clear rule ( ) Please answer the question below if the description should be referenced only on a case-by-case basis. A.4.3 On which occasions, or under which conditions, is the description referenced when determining the scope of the patented invention? Point 4, Chapter 3 of the "Principles of Patent Infringement Assessment" announced by the Taiwan Intellectual Property Office and taken into reference by the courts in Taiwan provides the following: When the technical features in claims are clearly described, the content described in the description and drawing(s) shall not be added into the claims. When the technical features in the claims are not clearly described, the description and drawing(s) may be considered as a reference. When claims are inconsistent with the description and drawing(s), then the claims should be conformed. A.5 Is there a rule which allows the scope of a patented invention to be more broadly defined than the literal meaning of a claim (e.g., the doctrine of equivalents)? A.6 Is there file history estoppel that is, a rule precluding the patented invention from being interpreted broadly to cover subject matter excised by a narrowing claim amendment or by comment/submissions made during prosecution? Amendments Submissions during prosecution 3

4 A.6.1 If yes, please describe the rule. Point 6, Chapter 3 of the "Principles of Patent Infringement Assessment" announced by the Intellectual Property Office of the R.O.C provides the following: "Prosecution history estoppel" is a rule precluding patentees from reclaiming issues that have been confined or excluded and from filing prosecution in every step or documents by the "Doctrine of Equivalents". Therefore, "Prosecution history estoppel" can be a defense reason of the "Doctrine of Equivalents". A.7 Are there certain types of claims which are interpreted in a way which is different from the normal claim interpretation rules, e.g. means-plusfunction claims in the United States 2? If yes, please explain such types of claims and how they are interpreted. Paragragh 4, Article 19 of Enforcement Rules of Patent Act provides as follows. A technical feature in a claim for an invention which consists of a combination of multiple technical features may be expressed in meansplus-function or step-plus-function language. Such claim shall be interpreted to cover the corresponding structure, material, or acts described in the description and equivalents thereof. A.8 If the intended use is recited in a claim, it is a limitation on the scope of the claims i.e. required for infringement? Yes ( ) No ( ) No clear rule ( ) Explanatory comments Both subject matters of "use" and "product" are eligible in Taiwan to recite an intended use in a claim, i.e. "Use of a compound X in " and "Composition Y for use as." 2 Article 112, Paragraph 6, of the US Patent Law 4

5 The use recitation in a "use" claim will be undoubtedly deemed a limitation on the scope of a "use" claim. However, as for the use recitation in a "product" claim, because of the revision of the patent examination guidelines in 2013, the examination criteria regarding the use recitation in a product claim were apparently changed, and thus it is still hard to presume whether said change of the examination criteria will affect the related contents in the draft of a revised version of the "Principles of Patent Infringement Assessment" or the interpretation of the use recitation in a product claim when determining patent infringement before any related judgement is made. A.9 In a method claim, can a structural limitation be a limitation of the scope of the claim i.e. required for infringement? No clear rule ( ) Explanatory comments The "all-elements-rule" is a principle applicable to determine patent infringement, i.e. all elements defined in a claim should be deemed as limitations of the scope of the claim when determining patent infringement. Even though there are some exceptions to the rule, "a structural limiation in a method claim" is not considered one of the exceptions, thus will be a limitation required for infringement. A.10 In some countries, the process in a product-by-process claim is not considered relevant when determining the patentability of the claimed invention, whereas the process is considered relevant when determining infringement. Is it the same in your country? Yes ( ) No ( ) No clear rule ( ) Explanatory comments In Taiwan, the process in a product-by-process claim is not considered relevent when determining the patentability of the claimed invention. However, as for determining infringement, as described in our answer to question A.8 above, a revised version of the "Principles of Patent Infringement Assessment" is now being drafted; thus, it is hard to assert whether the process in a product-by-process claim will be considered relevant or not when determining infringement. 5

6 B. Claim Interpretation during Examination of Patent Applications 3 B.1 Is claim interpretation under examination the same as claim interpretation applied for infringement and validity actions in the Courts? Is there a tendency or practice for claims to be construed broadly when determining patentability and construed narrowly when determining infringement? Yes ( ) No ( ) Other ( ) B.1.1 During examination of a patent application, when the claims may be interpreted either broadly or narrowly, does the broader interpretation always apply? n/a 4 ( ) B.2 If yes, does the same rule apply when determining the validity of an invention after grant of a patent? (i.e. always broader interpretation) Yes ( ) No ( ) If the claim includes language describing an advantage of the invention, is that relevant to distinguishing the claimed invention from the prior art? No clear rule ( ) C. Formality Requirements for Claims C.1 Is there a statutory requirement that a claim should describe the subject matter clearly (requirement for clarity or clearness of a claim)? 3 Questions under question number 3 concern rules and practices before grant, particularly during examination of a pending patent application, whereas the questions under question number 2 concern determination of the protection scope of a registered patent. 4 n/a: Not applicable because a patent is registered without a substantive examination on the merits. 6

7 C.1.1 If Yes, please describe it. According to Paragraph 2, Article 26 of Taiwan Patent Act, each claim shall be disclosed in a clear and concise manner. C.1.2 Does the failure to meet the requirement constitute a basis for rejecting a patent application? n/a 5 ( ) C.1.3 Does the failure to meet the requirement constitute a basis for opposition? Yes ( ) No ( ) n/a 6 ( ) C.1.4 Does the failure to meet the requirement constitute a basis for invalidating the patent? n/a ( ) C.2 Is there a statutory requirement that a claim should be supported by the detailed description in the specification? C.2.1 If yes, please describe it. According to Paragraph 2, Article 26 of Taiwan Patent Act, each claim shall be supported by the description. C.2.2 Does the failure to meet the requirement constitute a basis for rejecting the patent application? n/a 7 ( ) C.2.3 Does the failure to meet the requirement constitute a basis for opposition? Yes ( ) No ( ) n/a 8 ( ) 5 Not applicable because there is no examination or rejection of a patent application. 6 Not applicable because there is no opposition system. 7 Not applicable because there is no examination or rejection of a patent application. 8 Not applicable because there is no opposition system. 7

8 C.2.4 Does the failure to meet the requirement constitute a basis for invalidating the patent? >> End of Questionnaire << 8