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Application of the Doctrine of Not Importing Limitations from the Specification into a Claim: Insights from a Recent Court Decision
Article 58, Paragraph 4 of the Patent Act provides that “[t]he extent of the protection conferred by an invention patent shall be determined by the claims, and the description and drawings may be considered as a reference when interpreting the claims.” In this regard, the analysis and findings of the Supreme Administrative Court in its Judgment 114-Shang-Zi No. 160 dated April 30, 2026, particularly regarding how the description and drawings should be considered in claim construction, are worth noting.
The Supreme Administrative Court stated in the judgment, “When construing the claims, the description and drawings are subordinate to the claims, and matters not recited in the claims are, in principle, outside the scope of protection. However, because the claims generally contain only those statements necessary to define the scope of protection and may not always be entirely clear, claim construction should not be confined to the literal meaning of the claim language. Rather, the claims should be construed from the perspective of a person ordinarily skilled in the art, taking into account the patent description and drawings to understand the purpose of the invention, the problem to be solved, the technical means corresponding to such problem, and the functions and effects of such technical means; the technical features of the claims should then be given the broadest reasonable interpretation in defining the scope of the claims. However, technical features not recited in the claims should not be imported from the description or drawings, thus avoiding improper narrowing of the objectively disclosed scope of the patent right as published. This is referred to as the ‘doctrine of not importing limitations from the specification into a claim.’”
In the abovementioned case, the applicant filed an invention patent application titled Managing Unwanted Heat, Mechanical Stresses and EMI in Electrical Connectors and Printed Circuit Boards. Following both initial examination and reexamination, the Taiwan Intellectual Property Office (“TIPO”) determined that several claims of the application lacked novelty or inventive step, and therefore rejected the application. The applicant subsequently filed an administrative appeal with the Ministry of Economic Affairs, which dismissed such appeal. The applicant then initiated administrative litigation before the Intellectual Property and Commercial Court (the “IPC Court”) and, following an unfavorable first-instance judgement (IPC Court Administrative Judgment 113-Shin-Juan-Su-Zi No. 32), appealed to the Supreme Administrative Court.
The Supreme Administrative Court’s discussion of the doctrine of not importing limitations from the specification into a claim centered on Claim 1. The appellant (i.e., the patent applicant) argued that the “slide-on stiffener” recited in Claim 1 was configured, by virtue of its inherent “slide-on” functionality, to slide over and wrap around a corresponding edge of the substrate without contacting any other substrate. Figures 1A through 1D clearly illustrated such manner of interaction. According to the appellant, this was materially different from the technical feature disclosed in the cited prior art, in which a printed circuit board was inserted into a card holder. The appellant therefore contended that the cited prior art could not establish that the invention of Claim 1 lacked novelty.
The Supreme Administrative Court, however, held in Judgment 114-Shang-Zi No. 160 that the language of Claim 1 did not include the process-related technical feature “the slide-on stiffener is configured to slide over and wrap around a corresponding edge of the substrate” or the step “sliding the slide-on stiffener onto the substrate.” The Supreme Administrative Court further found that “sliding the stiffener onto the substrate” and “sliding the substrate into the stiffener,” as essentially disclosed in the prior-art reference cited during reexamination, involved substantially the same relative movement and did not differ in substance in terms of the purpose, function, or effect of the invention. Moreover, Claim 1 was, by its nature, a “product” claim rather than a “process” claim, and the two must be distinguished for purposes of claim construction. The Supreme Administrative Court therefore concluded that the appellant’s reliance on the “slide-on” manner disclosed in the description and drawings to distinguish the claimed invention from the cited prior art was inconsistent with the doctrine of not importing limitations from the specification. Claim construction should instead give the technical means recited in the claim their broadest reasonable interpretation and should not narrow the claim by reference to the embodiments or drawings. On such basis, the Supreme Administrative Court held that the prior-art reference cited during reexamination was sufficient to establish that Claim 1 lacked novelty.
In light of the above, the Supreme Administrative Court appears to have taken the view in this case that, where a technical feature disclosed in the drawings is not recited in the claim and does not, in substance, assist in construing the “purpose of the invention, the problem to be solved, and the means, functions, and effects for solving such problem” (in this case, because the Supreme Administrative Court found that the feature did not give rise to any substantive distinction between the claimed invention and the cited prior art), the inherent distinction between a process-related technical feature and a product claim should lead to the conclusion that such technical feature disclosed in the drawings shall not be imported into the claim. Such approach, in the Supreme Administrative Court’s view, gives the claim its broadest reasonable interpretation.
It remains to be seen, however, whether the foregoing inherent distinction between a “process” and a “product” merely serves as a factor to be considered where a technical feature disclosed in the drawings does not assist in claim construction, or whether that distinction may, in itself, constitute a sufficient basis for not importing such technical feature into the claim, particularly where the technical feature disclosed in the drawings does assist in claim construction. Further developments in judicial practice on this issue warrant continued attention.