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IPCC 2022 Xing Zhuan Su Zi No. 26 Decision on Whether Documents Later Than the Filing Date/Priority Date of a Patent Application May be Utilized as a Basis for Determining “Support” and “Enablement” Requirements
The Specific Patent Agency will determine the novelty and inventive step of a patent application against the searched citations when conducting a substantive examination of the patent application. In general, the citations should be documents published and made available to the public prior to the filing date or priority date of the patent application. In addition to the aforesaid determination of novelty and inventive step, the Specific Patent Agency will also determine whether the disclosure of description meets the provisions, namely, the requirements for fully disclosing the invention in a manner sufficiently clear for the description to be understood and carried out (enabled) by a person ordinarily skilled in the art.
Unlike the determination of novelty/inventive step, the Specific Patent Agency may usually determine whether the description of a claimed invention meets the requirements directly from the description and drawings of the patent application, without presenting citations as criteria for comparison. However, in practice, where the Specific Patent Agency intends to use citations to negate that the format of description does not meet the requirements, the question remains whether the citations adopted under this circumstance must still be documents published and made available to the public prior to the filing date or priority date of the patent application. Likewise, where an invalidation petitioner intends to use citations to verify that the description does not meet the requirements, it remains to be confirmed whether proposed citations are subject to those published and made available to the public prior to the filing date or priority date of the patent application.
The Intellectual Property and Commercial Court (IPCC) rendered an unfavorable opinion over the foregoing issues in its 2022 Xing Zhuan Su Zi No. 26 Decision, with the facts and rules of logic thereof as follows.
The patentee filed a patent application for invention with TIPO on February 17, 2014 under the title of "Nematic liquid-crystal composition and liquid-crystal display element obtained using same" and claimed priority (of a Japanese patent, JP2013-043988 filed on March 6, 2013). The patent application was numbered as 103105078 and subsequently granted a patent (hereinafter referred to as the patent at dispute) numbered I488949 by TIPO.
The invalidation petitioner filed an invalidation action against the patent at dispute by claiming that it violates the provisions of Article 26, Paragraph 1 (“Enablement“ requirement), Article 26, Paragraph 2 ("Support" requirement), Article 31, Paragraph 1 and Article 22, Paragraph 2 of the Patent Act at the time of granting the patent at dispute. After the invalidation action against the patent at dispute was considered well-grounded by TIPO and the administrative appeal subsequently filed by the patentee was dismissed by the Ministry of Economic Affairs (MOE), the patentee initiated an administrative litigation. When the case was adjudicated, the IPCC confirmed that the TIPO decision of invalidation action was compliant with legal requirements and the MOE’s administrative appeal decision complied with rules and regulations, thereby upholding that the invalidation action against Claims 1 to 8 of the patent at dispute are well-grounded in its 2022 Xing Zhuan Su Zi No. 26 Decision.
Among the various issues of litigation, the invalidation petitioner asserts that Claims 1 to 8 of patent at dispute do not meet the “Support” requirement and are unsupported by the description of the patent at dispute by presenting Evidence 2 (Patent No. I452119B, hereinafter referred to as the evidence) which indicates that the laid-open date of the patent at dispute is later than its priority date. Simply put, the invalidation petitioner uses the embodiments provided in the evidence to confirm that the scope of the compound combinations set forth in Claim 1 of the patent at dispute is toobroad to even cover compounds that cannot achieve the effects claimed by the patent at dispute, such that it is difficult to reasonably predict or extend the full scope of Claim 1 from what is disclosed in the description of the patent at dispute. Consenting to the foregoing assertion, the IPCC decided that Claim 1 is unsupported by the description, and that the same applies to the remaining claims thereof.
The patentee attempted to refute the evidence as an eligible evidence to determine the “Support” requirement, arguing that the laid-open date of the patent at dispute indicated in the evidence is later than its priority date. Nonetheless, the IPCC holds that the patentee’s foregoing assertion is unacceptable, by citing the following paragraphs from the Patent Examination Guidelines.
- Pursuant to what the Patent Examination Guidelines Part II, Chapter 1, Point 1.3.2 (Examination on violation of the “Enablement” requirement”), “Where the description of a patent application is considered non-compliant with the “Enablement” requirement, clear and sufficient grounds shall be provided. Either the defects in the description shall be provided specifically, or the grounds shall be supported with the documents publicly known, and the applicant should be notified to file a response or amend the description. Despite the foregoing documents being in principle only limited to the patent or non-patent documents having been publicly disclosed prior to the filing of the patent application, in order to indicate that what is recorded in the description fails to support the correct technical facts to be recognized by a person ordinarily skilled in the art of the invention, the citations adopted to confirm the patent violating the requirement referred herein may also contain patent or non-patent documents publicly disclosed later than the filing of the patent application.” Thus, in order to verify that the invention disclosed in the claims in fact fails to achieve the desired purpose, citation of patent or non-patent documents publicly disclosed later than the filing of the patent application may still be allowed.
- Meanwhile, according to the Patent Examination Guidelines Part II, Chapter 1, Point 2.4.3.1 (Examination on the “Support” requirement”), “When the scope of a claim is so broad as to be unsupported by the description, what is recorded in the description is usually unclear and insufficient, such that the invention disclosed in the scope of the claim may allow only partial enablement instead of full enablement by a person ordinarily skilled in the art of the invention, the disclosure is deemed as failing to meet the “Enablement” requirement.”
Although the Patent Examination Guidelines do not directly promote examination of the “Support” requirement considering the patent or non-patent documents publicly disclosed later than the filing of the patent application, the IPCC holds that the “Support” and “Enablement” requirements are interrelated, deciding consequently that patent or non-patent documents publicly disclosed later than the filing of the patent application may also be cited in examination thereof. Notably, the foregoing criteria for determination of “Support” and “Enablement” requirements are applicable to both the examination stage of the patent application and the invalidation procedure after the patent is granted.