萬國法律事務所

IP Court Watch / Patents

Is A Method Claim Required to Include “Step(s)” Only?
Frank Lu, Partner
frank.lu@taiwanlaw.com

The claim at issue comprises 5 limitations, two of which relate to steps and other three belong to the characterization of the product elements. The IP Court said the format of this claim description is not fully disclosed in a manner clear and sufficient for it to be understood and carried out by a person ordinarily skilled in the art.

The patentee then made an amendment to change the wording from “characterized by” to “comprising the steps of.” However, The IP Court reasoned that the original claim has the problem of “unclear,” and since the amendment did not substantially enlarge or alter the scope of the claim, the problem of “unclear” is still not fixed after amendment.

The Supreme Court disagreed. According to the Patent Act, a post-grant amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed. As such, the reasoning of the IP Court is a contradiction since whether the problem of “unclear” is fixed is irrelevant to the validity of the amendment; otherwise the problem of “unclear” can never be fixed since the amendment per se cannot extend beyond the scope of the claim as filed.

The Supreme Court further pointed out the Patent Act and the regulations (including the Patent Examination Guidelines) do not restrict how to express the formats of the “step” or “condition” by using the words or phrases. Therefore, as long as the claim can define the claimed invention and express the technical features, the claim at issue should be deemed that it meets the requirement of the Patent Act. In addition, since the Taiwanese Intellectual Property Office (TIPO) seems to have some positive opinion on the amendment, the IP Court should investigate and respect the fact (See 104-Tai-Shang-Ji-1485).

The importance of this Supreme Court judgment is that the IP Court should substantive examine the validity of the amendment of the claim(s), and, if the Court’s opinion is different from that of the TIPO, the Court should pay more attention to this issue by further investigating evidence, for example, by ordering the TIPO to intervene in the litigation procedure according to the Article 17 of the Intellectual Property Case Adjudication Act.