JUrISdIctIOn repOrt: tAIWAn
A LOOK At cLAIm cOnStrUctIOn
tony t.Y. chang
Saint Island International Patent & Law Offices
The formation of the Intellectual Property Court (IP Court), on July 1, 2008,
“tHe IntermedIAte cOUrt AGreed
has brought about many changes to the landscape of patent infringement
litigation. Infringement lawsuits are now generally brought before the IP
WItH IKeA’S ArGUment tHAt tHe LeVeL
Court and it has become standard practice in the preparatory procedure of a OF OrIGInALItY reQUIred tO GAIn
patent infringement lawsuit to invite the opposing parties to file observations
cOpYrIGHt prOtectIOn AS A WOrK OF
on the construction of the claims of the patent in issue.
AppLIed Art IS HIGHer In tHe cASe OF
Although, unlike a formal infringement opinion, the observation submitted
An IndUStrIAL deSIGn.”
by a patentee generally does not include an analysis of the potentially
infringing product or an explanation of the applicability of the ‘doctrine of
equivalents’, these two factors should be taken into account when formulating
an observation. If they are not, the claims constructed may be too restrictive
to be enforceable against a potential infringer, either by literal interpretation
or by the application of the doctrine of equivalents. Since claim construction
is crucial in establishing a patent infringement case, the patentee should
present a comprehensive observation in the preparatory procedure in order
to prevail in the subsequent trial proceedings.
that can stand up to the challenges of the prior art while still being
enforceable against the potential infringer.
In Taiwan, since many patents were granted with broad main claims
Regarding the language of claims, while the Enforcement Rules of the Patent
that remain uncontested by the prior art references cited in their foreign
Act provide that claims could be drafted in the more generic means-plus-
counterparts, a defendant generally would file an invalidation action with the
function or step-plus-function language if an invention is a combination of
Intellectual Property Office (IPO) based upon such prior art references. The
technical features, and some examples of typical use of such language are
patentee may need to restrict the scope of the claims of the patent in issue
given in the Important Notes on Patent Infringement Assessment published by
during the invalidation proceedings.
the IPO, there is no clear guidance on the use of such language.
Post-grant amendment is permissible as long as it does not go beyond the
In May 2008, the IPO added a new chapter on the substantive examination of
disclosure of the specification or drawings as originally filed, and does not
computer software-related inventions to the Patent Examination Guidelines.
substantially broaden or alter the scope of the claims. However, due to the
Under the new chapter, “[a] claim will be presumed to use means- or step-
ambiguous and equivocal phraseology used in the Patent Examination
plus-function language if it meets the following three conditions: (1) the
Guidelines in regard to alteration of the scope of the claims, examiners are
technical features are expressed by the phrase ‘… means for …’ or ‘… step
inclined to misconstrue the true meaning of the term ‘alteration’ and impose
for …’; (2) the phrase ‘…means for…’ or ‘…step for…’ must be modified by a
unreasonable restrictions on post-grant amendment.
specified function; and (3) the phrase ‘…means for…’ or ‘…step for…’ must
To avoid unnecessary argument with the examiner during the proceedings
not be modified by sufficient structure, material, or acts for achieving the
of an invalidation action, the patentee may have to refrain from
specified function”.
adopting the more straightforward strategy of amending the claims to be
It is noteworthy that, during claim construction, a means-plus-function
commensurate in scope with the main claims of the foreign counterparts
or step-plus-function claim will be construed to cover only the structure,
in order to eliminate challenges based upon the prior art references cited
material or acts described in the specification, and equivalents thereof, based
in such foreign counterparts when they are adduced by the defendant.
on the view of a person having ordinary knowledge in the art to which the
Under such circumstances, and due to the fact that the two opposing
invention pertains.
parties are allowed to file observations and counter-statements until they
have no new observations or new evidence to file during the proceedings
of an invalidation action, the patentee is advised to determine, at the first
opportunity, the extent of the amendment to the main claims (if at variance Tony T.Y. Chang is a lawyer at Saint Island International Patent & Law Offices.
with the language of the main claims in other corresponding applications) He can be contacted at: siiplo@mail.saint-island.com.tw
74 World Intellectual property review September/October 2009 www.worldipreview.com
Page 1  |  Page 2  |  Page 3  |  Page 4  |  Page 5  |  Page 6  |  Page 7  |  Page 8  |  Page 9  |  Page 10  |  Page 11  |  Page 12  |  Page 13  |  Page 14  |  Page 15  |  Page 16  |  Page 17  |  Page 18  |  Page 19  |  Page 20  |  Page 21  |  Page 22  |  Page 23  |  Page 24  |  Page 25  |  Page 26  |  Page 27  |  Page 28  |  Page 29  |  Page 30  |  Page 31  |  Page 32  |  Page 33  |  Page 34  |  Page 35  |  Page 36  |  Page 37  |  Page 38  |  Page 39  |  Page 40  |  Page 41  |  Page 42  |  Page 43  |  Page 44  |  Page 45  |  Page 46  |  Page 47  |  Page 48  |  Page 49  |  Page 50  |  Page 51  |  Page 52  |  Page 53  |  Page 54  |  Page 55  |  Page 56  |  Page 57  |  Page 58  |  Page 59  |  Page 60  |  Page 61  |  Page 62  |  Page 63  |  Page 64  |  Page 65  |  Page 66  |  Page 67  |  Page 68  |  Page 69  |  Page 70  |  Page 71  |  Page 72  |  Page 73  |  Page 74  |  Page 75  |  Page 76  |  Page 77  |  Page 78  |  Page 79  |  Page 80  |  Page 81  |  Page 82  |  Page 83  |  Page 84