The fundamental principle governing claim interpretation for invention and utility model patents is stipulated in Article 58.4 of Taiwan’s Patent Act, which states: “The extent of the protection conferred by an invention patent shall be determined by the claim(s), and the description and drawing(s) may be considered as a reference when interpreting the claim(s).” (Pursuant to Article 120 of Taiwan’s Patent Act, the same provision applies mutatis mutandis to utility model patents.)
However, the scope of application of “the description and drawing(s) may be considered as a reference” has frequently been debated.
On this point, on January 15, 2025, the Supreme Administrative Court issued Judgment (2024) Shang-Tzu No. 132, which pointed out:
“When interpreting the claim(s), the invention description and drawing(s) are regarded as subordinate to the claim(s). Matters not recited in the claim(s) are not within the extent of the protection. Nevertheless, as the claim(s) typically provide only the statements necessary to define the extent of the protection and may contain ambiguities, interpretation should not be confined to the literal meaning of the claim language. Instead, a person having ordinary skill in the art (PHOSITA) should refer to the description and drawing(s) to understand the purpose of the invention, the problem(s) intended to be solved, the corresponding technical mean(s) and function(s), and the effect(s) achieved, so that the technical feature(s) recited in the claim(s) should be given the broadest reasonable interpretation to determine the extent of the protection. However, technical feature(s) not recited in the claim(s) should be avoided from being imported from the description and drawing(s) in a manner that improperly narrows the objectively disclosed scope of the invention patent as published, which constitutes the principle of Improper Importation of a Limitation from the Specification into the Claims.” For a detailed report on this Judgment, please see our firm’s April 2025 newsletter, Recent Rulings by the Supreme Court and the Supreme Administrative Court of Taiwan Regarding “Inventive Step.”
In July 2025, the Taiwan Intellectual Property & Commercial Court (IPCC) issued Judgment (2024) Xing-Zhuan-Su No. 65, which further provided clarification on the application of the principle of Improper Importation of a Limitation from the Specification into the Claims, and is therefore noteworthy.
The case concerned an invalidation case filed against a Taiwanese utility model patent. The Taiwan Intellectual Property Office (TIPO) determined that the challenged claims were unpatentable on the grounds of lacking inventive step. The patentee subsequently filed an administrative litigation after going through the administrative appeal procedure. The key issue relevant to this article was the patentee’s argument that the term “sheet implantation” in the patent at issue implicitly referred to “heat sink implantation” or “heat sink implantation with adhesive dispensing,” and therefore contended that the “vacuum sheet implantation device” recited in Claim 1 of the patent at issue differed in both purpose and configuration from the “bonding equipment” disclosed in Exhibit 2.
The patentee argued that the “vacuum sheet implantation device” functioned to perform sheet implantation on an object to be attached, such as a heat sink, which differs from the “bonding equipment” disclosed in Exhibit 2, used for bonding a curved cover panel and a flexible display, rather than performing sheet implantation on a heat sink.
However, the IPCC held that the patentee’s argument violated the principle of Improper Importation of a Limitation from the Specification into the Claims and was therefore rejected. The main reasons are as follows.
- The specification of the patent at issue did not disclose or refer to any technical terms such as “dispensing” or “heat sink.
- The description, claims, and drawings of the patent at issue during patent prosecution merely used terms such as “object to be attached 50” and “object to be processed 60,” and the patent was granted based on this wording, which does not support the patentee’s contention of the “dispensing-based heat sink implantation device.”
- Even if it is acknowledged that the specification of the patent at issue may implicitly teach “heat sink implantation” or “heat sink implantation with adhesive dispensing,” Claim 1 of the patent at issue did not recite the aforesaid technical features, and therefore such technical features could not be imported from the description or drawings to define the scope of Claim 1.
Furthermore, during the prior administrative appeal stage, the patentee attempted to interpret the “supporting portion” in Claim 1 as “the supporting portion provided in a recessed area on the top side of the lower jig” to emphasize structural differences from the “bonding component” disclosed in Exhibit 2, and also argued that the functions of the two differed. However, the administrative appeal board rejected this argument, stating in the decision that such an interpretation would import the technical features not recited in Claim 1 from the description and drawings, violating the principle of Improper Importation of a Limitation from the Specification into the Claims, and therefore could not serve as a basis for assessing inventive step. This determination in the appeal decision and the reasoning of the IPCC described above collectively reinforce the consistent judicial stance on the matter.
Takeaways
This judgment illustrates that the description and drawing(s) are as crucial as the claim structure. The disclosure in the description and drawing(s) influences the interpretation of the claim scope, while the layered protection of each technical feature in the claim(s) ensures that the patent rights can be effectively defended and utilized in practice.