Article 43.2 of Taiwan’s Patent Act stipulates: “Except for correction of translation errors, any amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed.”
The “scope of content disclosed” refers to all matters that have been clearly recited in the description, claims, or drawings as filed on the date of filing, or that a person having ordinary skill in the art (PHOSITA) can directly and unambiguously derive from them. However, determining what a PHOSITA can “directly and unambiguously derive” must be assessed on a case-by-case basis.
On this point, in June 2025, the Supreme Administrative Court issued Judgment (2023) Shang-Tzu No. 782, which provided clarification and is worth noting.
The case concerned a divisional application that underwent four amendments. The key was to add the limitation “the concave shapes do not extend from one edge of the substrate to the opposite edge” to the claims. The Taiwan Intellectual Property Office (hereinafter “TIPO”) rejected the amendments on the ground of “extension beyond the scope of disclosure” in its preliminary examination opinion, re-examination opinion, and re-examination decision.
TIPO’s specific reasons included:
(i) A review of the description, claims, and drawings at the time of filing reveals no technical content regarding the relative relationship between multiple concave shapes and the edges of the substrate; and
(ii) Figure 5A cannot fully and accurately represent the relationship between “each concave shape in the surface structure of the optical sheet” and “one edge and the opposite edge of the substrate.”
The applicant disagreed and, after an administrative appeal, filed an administrative litigation. The Intellectual Property and Commercial Court revoked both the appeal decision and the re-examination decision. Dissatisfied, TIPO appealed to the Supreme Administrative Court (hereinafter “the Court”).
Cases where TIPO appealed to the Supreme Administrative Court for disputes over “amendment extending beyond the scope of disclosure” are extremely rare, making this case particularly significant in the IP field.
The issue in this case was whether the latest amended claim language—“each concave shape does not extend from one edge of the substrate to the opposite edge”—could be directly and unambiguously derived from Figure 5A of the patent application.
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The Court cited the Patent Examination Guidelines, which states that “directly and unambiguously derivable” is where a PHOSITA can clearly ascertain (or have no doubt) that the description, claims, or drawings as filed have solely or collectively implied a specific matter recited in the amended description, claims, or drawings without implying other matters.
The Court then analyzed Figure 5A, which shows the actual composite structure of the first concave shapes and the second shapes. It shows multiple elliptical bright spots, some of which have smaller bright spots or dark spots on them. Referring to the relevant description, the Court held that the first concave shapes are larger and smoother, while the second shapes are irregular traces superimposed on the first concave shapes. Therefore, the Court determined that a PHOSITA, based on the overall disclosure at the time of filing, would directly and unambiguously derive that the larger elliptical bright spots in Figure 5A represent the first concave shapes, not the second shapes.
In addition, the Court explained that the partial enlarged view in Figure 5A illustrates the specific features of the composite structure, and unless otherwise specified, structures outside the partial view should be presumed to be consistent with those within. Thus, Figure 5A already disclosed that each concave shape does not extend from one edge of the substrate to the opposite edge. Accordingly, the Court upheld the lower court’s finding that the amendment did not extend beyond the scope of the original disclosure.
It can be observed that the dispute arose because the amended claim language is absent from the description and found its basis solely on the drawings that lack relevant reference numerals. The Supreme Administrative Court, by referring to the Patent Examination Guidelines and excluding alternative interpretations of the drawings, confirmed that drawings can serve as a basis of disclosure in support of an amendment, thereby affirming that the amendment did not extend beyond the scope of disclosure. This judgment provides practical guidance for relying on drawings as the basis for amendments in patent examination practice.