Introduction 

The disclosure of a patent specification is intended to serve the purpose of applying for patent protection. Article 26 of the current Patent Act states that "(1) The description shall fully disclose the invention in a manner clear and sufficient for it to be understood and carried out by a person ordinarily skilled in the art. (2) Claim(s) shall define the claimed invention, and more than one claim may be included therein. Each claim shall be disclosed in a clear and concise manner and be supported by the description." Similarly, 35 U.S.C. 112(a) also states that the patent specification must comply with the "written description requirement," which means that the content of the patent specification must convey to the public that the patent applicant is in possession of the invention as defined by the claimed scope. In other words, the content recorded in the patent specification must support the claimed scope in a manner that the public would consider the applicant to actually possess at the time of application, and it must also meet the "enablement requirement," which means that the content recorded in the patent specification must enable a person skilled in the art to practice the invention as defined by the claimed scope. The legislative rationale is that the patentee must make a trade-off in order to obtain the corresponding scope of exclusive rights. 

However, when the level of disclosure in the patent specification "exceeds" the aforementioned thresholds, resulting in some content being disclosed only in a manner that meets the thresholds in the specification but is not included in the claimed scope, would this have any adverse effects on the applicant (or subsequent patentees)? In this article, we will briefly explain the possible application of the "Rule of Dedication" in Taiwan and the United States in cases where there is a mismatch between the claimed scope and the disclosed content.

The Rule of Dedication and its scope of application 

The Rule of Dedication was discussed in the case of Miller v. Brass Co. by the United States Supreme Court in 1881. In this case, the patentee successfully obtained a broadening reissue^[1] after 15 years of obtaining the patent, changing the claimed patent scope from "a lamp with a double dome and without a chimney" to "a lamp with a single dome and with a chimney." The reason for this change was that the lamp with a single dome and with a chimney was already disclosed in the patent specification but was mistakenly not included in the claimed patent scope. In the appeal, besides the issue of the patentee's negligence, the Supreme Court also found that the patentee only claimed a specific structure and did not claim other structures that were clearly disclosed in the specification. These unclaimed structures should be considered as dedicated to the public and therefore deemed the broadening reissue invalid. 

In the case of In re Gibbs in 1971, the court ruled that the Rule of Dedication does not apply to two separate patent applications filed by the same applicant at different times and belonging to different periods of the Patent Office. The Patent Office used the disclosed but unclaimed content of the "earlier application" to reject the novelty of the "later application" filed by the same applicant but not simultaneously belonging to the Patent Office.^[2] The "later application" claimed the content that was disclosed but unclaimed in the "earlier application." In this case, the Patent Office, following the spirit of the Rule of Dedication, considered the content disclosed but unclaimed in the "earlier application" as dedicated to the public, equivalent to the applicant abandoning the invention, and therefore lacking novelty. The court overturned the Patent Office's determination, stating that the claims made in the "later application" clearly expressed that the content disclosed but unclaimed in the "earlier application" was not intended to be dedicated to the public. Whether the "earlier application" qualifies as prior art under the patent law and can be used as a basis for rejection is another independent issue.^[3]

In the case of Maxwell v. J. Baker, Inc. in 1996, the court applied the Rule of Dedication to limit the doctrine of equivalents. Ms. Maxwell invented a way to connect a pair of shoes without eyelets (shoes with eyelets can be tied with laces or cords through the eyelets) to prevent the loss of paired shoes during retail. The patent specification of Ms. Maxwell recorded three implementation methods, placing a filamentary fastener at different positions (A, B, C) of the paired shoes as connecting means. However, the claimed patent scope only requested the pattern of placing the filamentary fastener at position A. The accused infringer implemented the patterns of placing the filamentary fastener at positions A, B, C. The district court held that the pattern of placing the filamentary fastener at position A constituted literal infringement, and the patterns of placing the filamentary fastener at positions B, C constituted equivalents infringement. The CAFC, based on the Rule of Dedication, held that the patterns of placing the filamentary fastener at positions B, C did not constitute equivalents infringement because the patentee had contributed to the public. The CAFC reiterated that during the application stage, the patent applicant cannot claim a narrower scope for approval by the Patent Office and then argue for a broader scope disclosed but unclaimed in the specification. This would encourage patent applicants to provide extensive disclosure in the specification and request a narrow scope for approval by the Patent Office, which would actually violate the requirement of 35 U.S.C. 112(2) at that time to "particularly point out and distinctly claim the subject matter which the applicant regards as his invention." 

In the 1998 case of YBM Magnex, Inc. v. U.S. Int’l Trade Comm’n (YBM case), CAFC limited the doctrine of equivalents only to situations "between different embodiments" based on the facts of the Maxwell case, creating a contradiction with previous precedents. In the YBM case, the disputed patent claimed a permanent magnetic alloy containing "6,000 to 35,000 ppm" of oxygen, while the accused infringer produced a permanent magnetic alloy containing "5,450 to 6,000 ppm" of oxygen. The patentee argued for infringement under the doctrine of equivalents, claiming that the range of "5,450 to 6,000 ppm" was disclosed in the specification of the disputed patent but not claimed. The CAFC held that the Maxwell case did not create a new rule that the doctrine of equivalents cannot cover what is disclosed but not claimed in the specification, thus limiting the application of the doctrine based on the Rule of Dedication. 

In the 2002 case of Johnson & Johnston Associates Inc. v. R.E. Service Co., Inc. (Johnson case), the CAFC en banc reconsidered the operation of the doctrine of equivalents established in the Maxwell case. In the Johnson case, the disputed patent claimed a device for making printed circuit boards, using a rigid aluminum substrate with copper foil stacked in layers to facilitate the production of printed circuit boards and overcome the difficulties caused by too thin copper foil. The specification of the disputed patent also mentioned that "although aluminum is currently the preferred substrate material, other materials such as stainless steel or nickel alloys can also be used." The accused infringer used iron (stainless steel being an iron-carbon alloy) as the substrate material. The CAFC overturned the district court's finding of infringement under the doctrine of equivalents and reaffirmed (1) the conflict between capturing unclaimed subject matter through the doctrine of equivalents and the public notice effect of the claims; (2) the patentee cannot evade the examination of broad claims by relying on broad disclosure and narrow claims. Therefore, based on the principles established in the Maxwell case, the court does not address the intention to extend exclusive rights to unexamined portions by the patent office. 

Since the landmark Johnson case in 2002, the Rule of Dedication has been gradually adopted by CAFC judgments to restrict contention based on doctrine of equivalents.^[4] It can be seen that the Rule of Dedication was initially applied to determine the validity of broadening reissue after the grant of a US patent, but recently it has been used to argue for one of the restriction factors of the doctrine of equivalents. In Taiwan, the "Guidelines for Patent Infringement Assessment" published by the Intellectual Property Office of the Ministry of Economic Affairs in 2016 also lists the "Rule of Dedication" as one of the restriction factors under the doctrine of equivalents. Its significance is described as follows: "The Rule of Dedication is based on balancing the interests of patent holders and the public to limit the scope of patent rights. If the patent holder discloses more technical content in the specification or drawings of the disputed patent application, but applies for fewer technical content in the claims, and then seeks to expand the scope to cover the disclosed technical content in the specification or drawings through the doctrine of equivalents in an infringement litigation, and if the doctrine of equivalents is applicable under this situation, it will result in inconsistency between the scope of patent rights claimed by the patent holder during the patent application stage and the infringement litigation stage, which is inconsistent with the purpose of the claims in defining the scope of patent rights." The Intellectual Property Court judgments also frequently cite the "Rule of Dedication" to restrict the contended scope based on doctrine of equivalents.^[5]

Taiwan does not have a broadening reissue procedure similar to that in the United States. Although the current examination guideline for post-grant amendment does not directly cite the "Rule of Dedication," it stipulates that post-grant amendment must not expand or change the scope of the patent claim as published. Although the examination guidelines for post-grant amendment allow the introduction of technical features from the specification or drawings into the granted patent claim,^[6] the amendment must simultaneously comply with the requirements of "achieving the purpose of the invention prior to the amendment" and "not substantially expanding or changing the scope of the patent claim as published" in a case-by-case context. For example, section 4.1 of the examination guideline for post-grant amendment exemplifies "increasing the subject matter of the application" as one of the situations which cannot be allowed in a post-grant amendment, such as "adding technical content (including the way of implementation or examples) disclosed in the specification but not covered by the claimed patent scope as published, which leads to the expansion of the claimed patent scope". Another example is that in cases 2 to 5 in section 7.3.3 of the examination guideline for post-grant amendment, when introducing technical features explicitly described in the specification into the claimed patent scope, if the feature to be introduced is more specific to a general claimed feature or it provides further limitation to a claimed feature, and after introduction of those features, the amended claim can still achieve the purpose of the invention prior to amendment, such amendment is considered not substantially expanding  or changing the scope of the patent as published and should be allowed for the post-grant amendment. 

In the next article, we will discuss the feasible ways of handling situations where the claimed patent scope does not match the disclosed content in patent applications in Taiwan and the United States, from the perspective of a patent applicant or a patent holder.