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I. Taiwan Supreme Administrative Court Rules Multiple Embodiments within a Single Prior Art Reference Can Be Combined to Defeat Inventiveness
In its Judgment No. 113-Shang-Zi-233 (promulgated on April 29, 2026), the Supreme Administrative Court affirmed the lower court’s judgment, ruling that when evaluating the inventiveness (progressiveness) of an invention patent, technical contents disclosed in different embodiments within a single prior art reference may be combined with each other to establish a lack of inventiveness, provided that such technical contents share a common role and function.
The dispute arose from an invalidation action filed by the intervener (Cublec Corp.) against an invention patent owned by Orange Electronic. Following its review, the Intellectual Property Office (TIPO) found that the patent lacked inventiveness in view of a single prior art reference, and thus issued a disposition sustaining the invalidation and revoking the patent. Dissatisfied, the patentee appealed, centering its core argument on the claim that the lower court erred by forcefully piecing together and combining separate technical features scattered across entirely distinct embodiments (the 1st, 2nd, 4th, and 10th embodiments) of a single reference, without demonstrating any “motivation to combine” among these independent embodiments, which violated the Patent Examination Guidelines and constituted an error in law.
The Supreme Administrative Court rejected the patentee’s arguments and clearly clarified the legal standard for evaluating inventiveness. The Court pointed out that an inventiveness assessment may involve combining not only multiple different prior art references, but also “technical contents from different parts of a single prior art reference.” As long as the technologies disclosed in the various embodiments of that single reference share a common role and function, and there are no incompatible conflicts that would prevent their integration, a person having ordinary skill in the art (PHOSITA) would be motivated to combine them.
References
Hyperlink: Judicial Yuan Judgment System
Chun-Wei Lo
Patent and Trademark Counselor of RichIP Group
II. Does TIPO have to accept an amendment submitted after the specified time period but before the rejection decision is served?
In Taiwan patent prosecution, if an applicant misses the specified time period for responding to an Office Action but files an amendment before the official administrative decision is served, is the Taiwan Intellectual Property Office (TIPO) obligated to accept it? The Taiwan Intellectual Property and Commercial Court (the “IPCC”) provided a clear stance on this issue in a 2026 administrative judgment.
During the re-examination stage of an invention patent application, the plaintiff (the applicant) received an Office Action from the defendant (TIPO) specifying a deadline of May 5, 2026, to file a response or amendment. The plaintiff delayed and did not file the amendment until May 16, 2026. TIPO refused to accept the late-filed amendment and issued a decision of rejection. The plaintiff disagreed and subsequently filed an administrative lawsuit after their administrative appeal was dismissed.
The IPCC dismissed the plaintiff’s lawsuit, and its reasoning can be summarized in the following three key aspects:
- Article 43 is a Lex specialis (special law) to Article 17 and Shall Apply Preferentially
Article 17, Paragraph 1 of the Patent Act states: “Unless otherwise provided in this Act, where an applicant fails to comply within a specified time period, the application shall be dismissed.” Its proviso further states: “However, if the delay is remedied before the dismissal decision is served…, it shall still be accepted”.
The IPCC pointed out that Article 43 explicitly restricts applicants to filing amendments only within the specified time period in order to prevent them from delaying the examination process through continuous amendments. Therefore, Article 43 constitutes the “unless otherwise provided” exception in Article 17, taking precedence and rendering the proviso of Article 17 inapplicable in this context.
- “Before the decision is made,” not “Before the decision is served”
Regarding the stipulation in Article 17, Paragraph 1 that a late amendment shall still be accepted if remedied prior to the administrative decision, the IPCC clarified that this phrase actually refers to the time before the decision is made, not before it is served to the applicant.
In this case, the plaintiff submitted the amendment on the exact same day TIPO issued the rejection. That is, when the plaintiff filed the amendment, TIPO had already made the decision and had no way of knowing that the applicant would submit an amendment. Therefore, the proviso of Article 17, Paragraph 1 does not apply.
- Exceptional acceptance of amendments must not delay the examination process
According to the Patent Examination Guidelines, a late-filed amendment may only be exceptionally accepted if it does not require a re-search (e.g., merely deleting rejected claims while retaining allowable claims) and its acceptance “does not delay the examination process.
Here, the plaintiff’s amended claims introduced a clarity issue, violating Article 26, Paragraph 2 of the Patent Act. The IPCC held that this was not a minor formal error, if TIPO had accepted it, it would inevitably have had to issue another OA to clarify the issue, thereby causing an unwarranted delay. Therefore, TIPO’s refusal to accept the amendment was entirely lawful.
In conclusion, it should be noted that this judgment is not yet final. If the plaintiff files an appeal, these legal opinions will be subject to further review by the Supreme Administrative Court.
References
Hyperlink: Judicial Yuan Judgment System
Jason Hung
Patent Attorney of RichIP Group
III.Taiwan Supreme Administrative Court: Claim Construction Should Not Stop at the Literal Wording, Nor Should Specification Content Be Directly Imported
Supreme Administrative Court Judgment No. 114-Shang-Zi-160 addresses the question of how claims should be construed in invention patent applications. What makes this judgment noteworthy is that, on one hand, the Court reaffirms that the scope of protection of an invention patent right is, in principle, governed by the claims; yet on the other hand, it also cautions that claim construction should not remain mechanically fixed on the literal text, but should instead be undertaken by a person having ordinary skill in the art (PHOSITA), who, by referring to the specification and drawings and taking into account the purpose of the invention, the problem to be solved, the corresponding technical means, and their effects, gives the technical features the broadest reasonable interpretation.
The Court noted that the function of the claims is to set forth the technical features constituting the invention, and thereby define the scope of patent protection. Accordingly, matters not recited in the claims are, in principle, outside the scope of protection. However, the specification’s description of the claims is often merely a necessary elaboration of the claimed scope, and the wording may in some respects lack full clarity. In such circumstances, adhering rigidly to the surface meaning of the claim language may instead fail to correctly capture the true substance of the technical features within the overall context of the invention.
For this reason, the Court’s focus is neither “looking only at the claims” nor “substituting the specification for the claims,” but rather requiring that an appropriate boundary be maintained between the two: when construing the claims, the specification and drawings may be consulted to understand the reasonable meaning and scope of the technical features, but technical features that appear in the specification or drawings yet are not recited in the claims must not, conversely, be imported directly into the claims as limitations. In other words, the Court in this case reaffirmed the “prohibition against reading limitations from the specification into the claims” (the anti-importation principle), which must be observed in claim construction.
From the standpoint of patent prosecution and dispute handling, this judgment offers two quite practical reminders. First, when drafting claims, applicants should still endeavor to clearly set forth the technical features they genuinely intend to protect, rather than over-relying on the expectation that the specification can later supply the critical boundaries. Second, when asserting claim construction arguments during prosecution or litigation, while the specification and drawings may certainly be invoked to explain the technical context, particular care must be taken not to treat details that exist only in the embodiments or descriptive portions as necessary limitations of the claims. Otherwise, this risks improperly narrowing the publicly announced scope of the right, to the detriment of the patentee’s ability to assert that right.
References
Hyperlink: Judicial Yuan Judgment System
Frank Tseng
Patent Counselor of RichIP Group