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Inventions Described in the Patent Specification but Not Claimed by the Patent Are Irrelevant to the Determination of Patent Definiteness

Hsiu-Ru Chien/Shih-I Wu

Grant of a patent constitutes a social contract entered by and between the public and the inventor(s).  In exchange for exclusive rights, the inventor shall fully disclose his/her invention in a manner clear and sufficient for it to be studied and improved by others, which is a requirement known as patent definiteness.   Such requirement will be met when the descriptions of the invention enable a person having ordinary skill in the art (PHOSITA) to understand and exploit its content, as provided in Paragraph 1 of Article 26 of the Patent Act.


However, descriptions within a patent specification often include inventions both claimed and not claimed by the patent.  Therefore, should patent definiteness be determined based on an overall consideration of the patent specification or based merely on the inventions set forth in the patent claims, with all of the rest taken out of consideration?  There was no explicit opinion in judicial practices for this issue.


On June 8, 2017, the Supreme Administrative court provided an explicit answer to the aforesaid question in its 2017-Pan-No.278 administrative judgement.  According to the judgement, the invention(s) claimed by the patent is the object to determine whether the invention meets the requirements of fully being disclosed in a manner clear and sufficient for it to be understood and carried out.  As for the invention(s) described in the specification but not recited in the claims, no matter whether such descriptions were clearly or sufficiently disclosed, the descriptions are irrelevant to the determination of the definiteness requirement.


In the case of said judgment, the patentee asserted that there have been globally recognized and published methods of manufacturing the medication disclosed in the patent at issue which can be carried out and then referred to a number of embodiments illustrated in the patent specification to support and explain the enablement of these methods.  However, both the Intellectual Property Court and the Supreme Administrative Court held a view that the patent specification failed to clearly and fully disclose the relevancy between ingredients and their efficacies recited in the claims; hence, the PHOSITAs cannot verify and infer the claimed medical effects, and the patent at issue failed to meet the requirement of definiteness.


The Supreme Administrative Court further explained in its judgement that evidence presented by the patentee to support patent definiteness shall focus on proving that a PHOSITA can, without the trouble of numerous trials, carry out the invention and achieve the claimed effects by following the patent specification instead of proving the possibility that the aforesaid PHOSITA might come up with the invention based on the knowledge of the filing date of the patent application.  The possibility to come up with the invention is a matter regarding determination of inventive step rather than the determination of definiteness and enablement.


Based on the above opinion held by the Supreme Administrative Court, while determining the requirement of definiteness, the content of the patent specification irrelevant to the patent claims is improper to be cited as a basis to prove sufficient disclosure; evidence presented by the patentee shall also focus on proving that the PHOSITA can carry out the invention without trouble of numerous trials.