This article was also published in “Asia IP INFORMED ANALYSIS,” Volume 15 Issue 9, Pages 30-33, September 2023.

Means-plus-function language – also known as MPF language –is a double-edged sword in Taiwan, sometimes helping and sometimes hurting a patent claim, depending on how the applicant uses it. Dr. Cross Liu explains how to weigh the pros and cons of using MPF language.

Taiwan’s patent regime has been adopting means (or step)-plus-function (“MPF” for short) language for more than 20 years. MPF language is known as a special way to describe an element in a claim for a combination, and more specifically, it enables the element to be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof. From the practical perspective, there are two important aspects which need to be considered regarding MPF language: one is how to recognize whether a claim uses MPF language, while the other is how to judge whether a claim using MPF language is definite. This article will draw your attention to the highlight that the Taiwan Intellectual Property Office (TIPO) and the jurisdictional courts have divergent opinions on the two aspects.

Inconsistency in recognizing whether a claim uses MPF language

Same as other patent regimes, the TIPO must follow the Patent Act, the Enforcement Rules of the Patent Act and the Examination Guidelines for Patents during the prosecution of a patent application. The Patent Act is actually silent about MPF language, and MPF language is primarily stipulated in the Enforcement Rules, Article 19, Paragraph 4, as follows:

An element of a claim, pertaining to an invention being a combination of a plurality of elements, may be expressed by means-plus-function language or step-plus-function language. Such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

This article makes a limitation to the usage of MPF language that the claimed invention must be a combination of a plurality of elements, which means that the claim including only one single element shall not use MPF language. The Enforcement Rules do not specify how to recognize whether an element of a claim is described in MPF language, whereas the Examination Guidelines provide a determination rule including three conditions as follows:

1. ) Whether an element of a claim uses the expression of “means for” or “step for”?
2. ) Whether the element includes a specific function?
3. ) Whether the element does not include structure, material, or acts in support of the specific function?

Under the determination rule, an element of a claim shall not be regarded as being described in MPF language unless the description form of the element meets all of the above three conditions. That is, as MPF language is successfully adopted to an element recited in a claim, the element shall basically be expressed as a “means for” or “step for” performing a specific function without the recital of structure, material, or acts in support thereof.

In practice, the TIPO tends to follow the applicant’s intention more than the description form of an element. The author’s experiences tell that the TIPO rarely concludes that an element is described in MPF language without the applicant’s confirmation or acquiescence, even if the TIPO feels or suspects that the description form of the element has met all of the three conditions.

In contrast, the jurisdictional courts (i.e., the Taiwan Supreme Administrative Court and the Taiwan Intellectual Property and Commercial Court) almost always focus on whether the description form of an element meets all of the three conditions, regardless of the applicant’s intention. In other words, the jurisdictional courts may conclude that an element is described in MPF language although the applicant had no such intention, and vice versa.

On the other hand, the TIPO strictly operates by the determination rule, whereas the jurisdictional courts uses the same rule in a looser way. Alternatively, we can say that the TIPO follows the form of the determination rule, while the jurisdictional courts follow the substance of the same. For example, as an element uses the expression of “unit for” instead of “means for”, the TIPO may not identify that the first condition is met, but the jurisdictional courts may.

Inconsistency in judging whether a claim using MPF language is definite

Under the Enforcement Rules, Article 19, Paragraph 4, a claim using MPF language shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Nevertheless, the Patent Act and the Enforcement Rules do not stipulate whether failure of describing the corresponding structure, material, or acts in the specification will make the claim indefinite. To some extent, this is why the TIPO and the jurisdictional courts have divergent opinions on determining whether a claim using MPF language is definite.

The definiteness requirement is necessary for both of the claim(s) and the specification and has been stipulated in the Patent Act, Article 26, the first and second paragraphs, as follows:

1. ) A specification shall provide a description [for the claimed invention] in a definite and sufficient manner for a person ordinarily skilled in the art to understood and carried out.
2. ) Claim(s) shall define the claimed invention, and more than one claim can be included therein. Each claim shall be described in a definite and concise manner and be supported by the specification.

The Examination Guidelines made by the TIPO further specify that if the specification does not describe the corresponding structure, material, or acts for the specific function described in MPF language, a person ordinarily skilled in the art is unable to determine the corresponding structure, material, or acts, and such a situation will make the concerned claim indefinite. Because the patent examiners of the TIPO must be constrained by the Examination Guidelines, from the perspective of the TIPO, failure of describing the corresponding structure, material, or acts in the specification indicates that the concerned claim is indefinite.

The jurisdictional courts, however, have different opinions. Firstly, the jurisdictional courts are not bound by the Examination Guidelines, which means that the jurisdictional courts can judge by themselves whether failure of describing the corresponding structure, material, or acts in the specification makes the concerned claim indefinite.

Further, the Taiwan Supreme Administrative Court has affirmed, in its judgments (e.g., No. 355 in 2013, and No. 149 in 2016), that the requirement of describing the corresponding structure, material, or acts in the specification is made only for the sake of claim construction, and failure of describing the corresponding structure, material, or acts in the specification does not necessarily make the concerned claim indefinite. The Taiwan Supreme Administrative Court also expressed that the definiteness of a claim only depends on whether a person ordinarily skilled in the art can clearly understand the claimed invention based on the whole description of the specification, and this rule is fixed no matter whether the concerned claim uses MPF language.

Thus, from the perspective of the jurisdictional courts, a claim using MPF language may still be deemed definite as long as a person ordinarily skilled in the art can clearly understand the claimed invention, even if the specification fails to describe the corresponding structure, material, or acts for the specific function recited in the claim.

Takeaways

1. The specification had better somehow and somewhat provide descriptions about structure, material, or acts of each element of a claim, no matter whether the applicant intends to use MPF language in the claim or not.

If intending to use MPF language in the claim, the applicant, of course, shall describe the corresponding structure, material, or acts for the specific function of each element as much as possible. In doing so, the claim may more easily pass the inspection of the definiteness requirement, as either the TIPO or the jurisdictional courts are in charge. In addition, the more description for the corresponding structure, material, or acts the specification provides, the broader scope the concerned element can covers, once the TIPO or the jurisdictional courts conclude that the concerned element is described in MPF language.

On the other hand, it would be better still to provide some descriptions in the specification about structure, material, or acts of each element of a claim, even if the applicant does not have any intention to use MPF language in the claim. Such descriptions leave the claim a better way out from being indefinite.

If an amendment is applicable, the descriptions will enable the applicant to add the appropriate structure, material, or acts into the claim to help the claim escape from MPF language. If an amendment is not applicable, the descriptions may enable the applicant to clearly prove that the specification has described the corresponding structure, material, or acts for the specific function recited in the claim. In either situation, the applicant may accordingly have a good basis to emphasize that the concerned claim is definite enough based on the descriptions.

2. The applicant needs to carefully weigh up the pros and cons of MPF language before using it.

MPF language is an inherently indefinite way to describe an element of a claim. As an element of a claim is described in MPF language, the only definite part is the function recited in the claim, which means that a person ordinarily skilled in the art can only understand what the element does, but cannot understand how the element performs it. That is why a claim using MPF language shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

In other words, the protection scope of a claim using MPF language is sensitive to the description of the specification. As a result, using MPF language will put a more burden on the applicant about describing the claimed invention in the specification.

In return, MPF language enables the applicant to claim an invention in a concise and simple manner, and this is useful for the applicant to claim a complicated or diverse invention. In addition, MPF language can keep a claim from including an element which is defined and limited to the specific structure, material, or acts. Instead, the element described in MPF language will be limited to the specific function recited in the claim, which means that the claim will not cover the functions similar to the specific function recited therein.

More specifically, if the claimed invention needs a specific function which can be performed by more than one feasible mechanism (i.e., structure, material, or acts), MPF language may be adopted to avoid that the claimed invention is limited to only one of the feasible mechanisms. The “specific” function will exclude other similar functions from the claim construction. For example, as the function recited in the claim is “detachable connection”, the claim will not be construed to cover other kinds of connection, such as “fixed connection”.

In contrast, if the claimed invention needs a specific mechanism (i.e., structure, material, or acts) which can perform more than one feasible function, MPF language may not be adopted to avoid that the claimed invention is limited to one of the feasible functions. The “specific” mechanism will exclude other similar mechanisms from the claim construction. For example, as the specific material recited in the claim is “Iron (Fe)”, the claim will not be construed to cover other kinds of materials, such as “Cobalt (Co)”.

In a word, MPF language is a double-edged sword, which may help or hurt the claims depending on how the applicant uses it. Accordingly, the applicant needs to carefully weigh up the pros and cons of MPF language before using it.

Conclusions

The inconsistency between the TIPO and the jurisdictional courts may create a loophole for opportunists, and appropriate harmonization is therefore necessary. Before that happens, though, the takeaways mentioned above may be helpful in reducing the possible negative effects caused by the inconsistency.

For IP Forum under Asia-Pacific Economic Cooperation (APEC) 19 July 2001

Contents

I. Overall View & Recent Signs

II. Interpretation of Claim(s)

III. Auxiliary Rules for Implementing Patent Infringement Assessment

I. Overall View & Recent Signs

A. Overall View of IP Protection in Chinese Taipei

Chinese Taipei is not a signatory to the Paris Convention, the Berne Convention, the Patent Cooperation Treaty (PCT) or other international treaties/conventions concerning intellectual property rights (“IPR”) protection.  However, the rapid transformation of Chinese Taipei from a developing society into an economically strong society is quite remarkable and reflects Chinese Taipei’s desire to take its place among the developed members of the world.  To sustain its reputation as one of the most economically powerful members in Asia, Chinese Taipei continues to revise its laws and regulations, in particular, those concerning the protection of IPR, to keep pace with its development.

In the traditional Chinese society, appropriating other people’s ideas for personal advantage is considered “borrowing the wisdom of others” and therefore is not deemed either morally wrong or illegal.  For this reason, over the past years, local industries have not fully appreciated or respected others’ IPR, and the local courts have not treated IPR infringement as a serious crime.  However, this has significantly changed during recent years primarily for two reasons.  First, local industries and people have realized the importance and true value of IPR through educational programs sponsored by the government.  Secondly, the innovative abilities of local industries have been greatly developed and market conditions have become so competitive that industries demand effective, global protection of their own technologies.

B. Chinese Taipei – A Great Market

High-tech industries are blossoming in Chinese Taipei.  Statistics highlights the growing importance of computer-related products to Chinese Taipei’s economy in general, and Chinese Taipei’s industry in particular.

Now, Chinese Taipei is the world’s third largest producer of information technology products and other computer hardware.  For example, Chinese Taipei’s aggregate output of semiconductors is only next to the United States and Japan.  Chinese Taipei’s impressive market share reflects its role as a dynamic player in the worldwide market of electronic products, computer hardware and semiconductors.  For this reason alone, Chinese Taipei has a vested interest in IPR protection.

C. Patent and Technology Commercialization Activities in Chinese Taipei

Chinese Taipei has other valid reasons and motives for its vested interest in IPR protection, as the country forges ahead in the field of technological innovation.  Research and development (R & D) expenditure continues to increase dramatically.  In step with this development, the number of overseas patents filed by local manufacturers has also significantly increased.  According to statistics released by the US Patent and Trademark Office (USPTO), Chinese Taipei filed 10,380 patent applications in the US in 2000.  This statistics means that Chinese Taipei had the third largest number of patent applications filed in the US in 2000.  5,578 patents were obtained in the US in 2000.  Furthermore, according to statistics released by the State Intellectual Property Office of China (SIPO), Chinese Taipei filed 10,778 patent applications in China in 2000.  This fact underscores the quality and quantity of the technologies developed in Chinese Taipei over the past few years.

II. Interpretation of Claim(s)

A. The Official Guidelines for Evaluating Patent Infringement

According to Paragraph 4, Article 131 of the Patent Law of Chinese Taipei, the Judicial Yuan and the Executive Yuan shall coordinate with each other in appointing Professional Institutions[1] for patent infringement verification.  Since the Courts’ viewpoints for interpretation of infringement have not yet matured enough to set up a standard or guideline, the Courts usually rely on the expertise of the Professional Institutions to render their judgments on patent infringement.  To harmonize the standards and steps for evaluating patent infringement, the Chinese Taipei’s Intellectual Property Office (IPO) issued the “Patent Infringement Assessment (PIA) Guidelines” in January 1996.  The Professional Institutions are basically obliged to follow the IPO’s PIA Guidelines for interpreting the effective scope of patented claims and to determine whether an accused product has infringed the claims.

B. The Basic Steps to Interpret the Patent Claims

1. All Elements Rule

Chinese Taipei adopts the so-called “All Elements Rule” under which each essential element of a claim or its substantial equivalent must be found in the accused device to constitute literal infringement.  In the All Elements Rule, “element” is used in the sense of a limitation of a claim.  If the accused device has all elements defined in the claim but further includes additional element(s) to perform additional function(s) without changing the structure and functions of those elements of the claim, the incorporation of the additional element(s) will not avoid literal infringement.

One remaining question is that whether a literal infringement can be found if an accused device omits one or some insignificant element(s) recited in the patent claims.  Although the PIA Guidelines are silent on this question, some senior examiners of the IPO are of the opinion that omission of non-essential element(s) which is (are) recited in the patent claims will not avoid literal infringement.

2. Doctrine of Equivalents

The Doctrine of Equivalents has been introduced into the PIA Guidelines to serve as an indispensable step following the “All Elements Rule” determination for evaluating patent infringement.  The Guidelines propose the following two tests for applying the Doctrine of Equivalents:

(1) The Interchangeability

The equivalent element performs substantially the same function in substantially the same way and produces substantially the same result as the clement expressed in the claim[2].

(2) The Predictability for Replacement

It is clear or obvious to a person skilled in the art at the time of any alleged infringement that the same result as that achieved by means of the element expressed in the claim can be achieved by means of the equivalent element (e.g., German test).

The PIA Guidelines does not indicate the order in which to apply the dual tests for equivalency, though some practitioners propose that the interchangeable test be applied first.

It must be noted that the “Hypothetical Claim” test under the U.S. litigation practice shall not be applied according to the PIA Guidelines

3. Prosecution History Estoppel

The Doctrine of Prosecution History Estoppel has also been introduced into the PIA Guidelines to serve as an indispensable step following the ‘Doctrine of Equivalents’ determination for evaluating patent infringement.  In other words, when interpreting the patent claim(s), the patent prosecution history should be taken into consideration as well.  The PIA Guidelines proposes a flow chart for conducting patent infringement assessments[3], see Figure 1.   Interpretation of the patent claim(s) should not involve argument(s) inconsistent with the statements included in the communications among the patentee, patent examiners and opposition/cancellation petitioners, which form the basis for the patent grant.

Under the Chinese Taipei’s practice, all patent claims shall be considered valid.  Furthermore, the general Court is not granted the power to determine the validity of a patent or the validity of any claim thereof.  Accordingly, the accused party shall not institute a formal invalidation action with the Court which is in charge of the patent infringement litigation, or argue that the patent or the claim(s) thereof is invalid.

Pursuant to the Patent Law of Chinese Taipei, an invalidation action can only be filed with the IPO.  Any party who is dissatisfied with the IPO’s decision must file an administrative appeal with the Ministry of Economic Affairs (MOEA).  Consequently, if the party is further dissatisfied with the decisions rendered by the MOEA, he/she must file an administrative suit with the Administrative Court.

Procedure for Patent Infringement Assessment

Figure 1[4]

III. Auxiliary Rules for Implementing Patent Infringement Assessment

A. Other Rules for Implementing All Elements Rules

It is the global practice that the scope of an invention claimed against any infringer shall be determined on the basis of the “claims” of the patent concerned[5].  In addition, patent claims are interpreted from two different angles.  That is, “Patentability” evaluated by the IPO during the prosecution procedure (invalidation procedure), and “Enforcement” determined by the Court during the infringement litigation.

The scope of a claim is defined by the essential elements or limitations of the subject matter sought to be patented.  It must be noted that the more the essential elements are, the narrower the scope of patent protection will be.  The fundamental logic of the definition of the claims and the relationship between the essential elements as well as the subject matter of the claims can be explained by the following Figures 2 and 3:

Where the first patent claims a stool “A” comprising a seat “a” and at least three legs “b.”  The second patent claims a chair “B” comprising a seat “a,” at least three legs “b” and a back “c.”  The scope of protection afforded to the stool A by the first patent shall be defined by the seat “a” and the legs “b,” while the scope of protection afforded to the chair B by the second patent shall be defined by the seat “a,” the legs “b” as well as the back “c.”

In general, the following three auxiliary rules can be adopted to facilitate the application of “All Elements Rules”[6]:

Rule of Exactness

The accused product copies the patented invention “exactly.”  That is, the accused product includes all essential elements defined in the patented claim without adding any additional element.  According to the Rule of Exactness, the accused product will literally infringe the patented claim.

Rule of Addition

The accused product includes all essential elements defined in the patented claim and at least one additional element.  According to the Rule of Addition, the accused product will literally infringe the patented claim.  Basically, the Rule of Addition shall not apply to material invention patent (i.e. Markush type claims) unless one of the following exceptions exists:

1. If the additional element is a trifling impurity which is so insignificant in quantity and performs no substantial effect to the claimed material; and

2. If the additional element is a neutral compound which is so insignificant in quality and performs no substantial effect to the claimed material.

Rule of Omission

The accused product omits one or more of the essential elements defined in the patented claim.  According to the Rule of Omission, the accused product will not literally infringe the patented claim.

B. The Fundamental to Apply the Doctrine of Equivalents

As compared with the “All Elements Rule” determination, the tests of Doctrine of Equivalents are more complicated and comparatively subjective. Normally, a patentee can only enlarge the enforceable scope of his patented claim by giving interpretation, under the Doctrine of Equivalents, to the specific element(s) of the claimed subject matter rather than to the claim itself.  We may explain the above condition by a simple drawing, see the following Figure 4:

Figure 4

A patent claims a chair “B” comprising a seat “a,” at least three legs “b” and a back “c.”  The accused chair “C” comprises a seat “a,” at least three legs “b” and an element “d,” where “d” is an equivalent of “c.”  In Figure 4, the circle “c’ ” defines an equivalent or enforceable range outside the scope defined by the back “c.”  The area denoted by “B” is defined by the seat “a,” the legs “b” and the back “c,” while the area denoted by “C” is defined by the seat “a,” the legs “b” as well as the back “c” and the back “c’.”  Basically, the enforceable scope afforded by the claim of the patented chair “B” under the Doctrine of Equivalents consists of areas “B” and “C.”

C. Supplementary Definition of the Doctrine of Equivalents 

Although the “tripartite test” proposes that the Interchangeability under the Doctrine of Equivalents shall apply if the equivalent element performs substantially the same function in substantially the same way and produces substantially the same result as the clement expressed in the claim, the existing tests for evaluating the Doctrine of Equivalents can hardly satisfy the objective and accurate requirements anticipated by the patentees, the accused parties and the practitioners.  Some experts presented the following statements pertaining to the Doctrine of Equivalents:

“Despite attempts at refinement and development over more than a century, the doctrine of equivalents remains imprecise.” ; and

“The Federal Circuit has undertaken to redefine the doctrine in an attempt to create greater certainty in application.  The court‘s efforts, however, are both ill-advised and unlikely to succeed.”[7]

The U.S. Court of Appeals for the Federal Circuit (CAFC) rendered some judgments which are quite useful for refining the Interchangeability test.  The CAFC said in one of the noted judgments: “…evidence of infringement under the doctrine of equivalents requires explanation of why the overall function, way and result of an accused device are substantially the same as those of a claimed device, and why the particular feature in the accused device is the equivalent of the claimed limitation.”[8]

In order to answer “why” the way(s), function(s) and result(s) of the equivalent element of the accused product are substantially the same as those of the specific element of the patented claim, we must exactly identify the way(s), function(s) and result(s) of this specific element defined in the patented claim.

D. The Sequence of Auxiliary Rules for the Doctrine of Equivalents

As indicated above, there are two tests, i.e., the Interchangeability and the Predictability for Replacement, for applying the Doctrine of Equivalents.  The PIA Guidelines fail to indicate the order in which to apply the dual tests for equivalency, though some practitioners propose that the interchangeable test should be applied first.  For the sake of prudence, it appears to be recommendable that the Interchangeability test be applied first due to its more objective aspect.[9]

E. The Boundary of the Scope Expanded under Doctrine of Equivalents

The tests of “Interchangeability” and the “Predictability for Replacement” are adopted to determine whether the accused product has infringed the patented claim under the Doctrine of Equivalents.  However, during the determination of the Doctrine of Equivalents, the following auxiliary rules may be used to evaluate the boundary or limitation of the protective scope afforded by the patented claim according to the Doctrine of Equivalents:

1. The patented claim shall not be extended to cover the prior art because prior art is a part of the public domain;

2. The patented claim shall not be extended to cover an inferior product because the inferior product will not enjoy the advantages of the patented invention and does not involve an inventive step  over the prior art.  In other words, the claim would be invalid or unpatentable if it is interpreted according to the Doctrine of Equivalents to cover the inferior product; and

3. The patented claim shall not be extended to cover a product that involves breakthrough in technical theory or principle because the invention defined in the patented claim is not developed to such an extent or technical level.  In brief, a product involving breakthrough in technical theory may position beyond the teachings and contribution of the patented invention.

F. Possible Impact of the Foreign Patent Infringement Case

On 29 November 2000, the CAFC rendered its well-anticipated en banc decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd.[10]  This decision may radically and controversially change the law of Prosecution History Estoppel.  The majority opinions, authored by Judge Schall, can be summarized as follows:

1. An amendment that narrows the scope of a claim for any reason related to the statutory requirements for a patent will give rise to Prosecution History Estoppel with respect to the “amended claim element”;

2. “Voluntary” claim amendments are treated the same as other claim amendments;

3. When a claim amendment creates Prosecution History Estoppel, no range of equivalents is available for the amended claim element; and

4. “Unexplained” amendments are not entitled to any range of equivalents.

The CAFC addressed in the decision: “When no explanation for a claim amendment is established, what range of equivalents, if any, is available under the Doctrine of Equivalents for the claim elements so amended.  Finding its answer in Warner-Jenkinson, the CAFC held that when no explanation for claim amendment is established, no range of equivalents is available for that claim element.

According to the decision, to avoid the application of an estoppel, the patentee must show that the amendment was made for a purpose unrelated to patentability concerns.  In other words, the patentee may not rely on extrinsic evidence.  Instead, he must argue against the application of Prosecution History Estoppel solely on the official records of this patent’s prosecution.[11]  It is believed that the above decision should have influenced the U.S. patent prosecutions and litigations.

Although the CAFC’s en banc decision severly limiting the claims of infringement under the Doctrine of Equivalents has been appealed to the U.S. Supreme Court[12], this very pro-defendant decision will certainly carry weight in the near future to Chinese Taipei’s patent practice as well.

[1] The Judicial Yuan and the Executive Yuan have appointed 69 Professional Institutions so far.

[2] This interchangeability test is substantially identical with the U.S.「tripartite test」 or 「Graver Tank Test」, see Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 US 605,85 USPQ 328, 1950.

[3] See Page 73 of the IPO’s PIA Guidelines.

[4] Criticisms of the logic of this flow chart and the IPO’s PIA Guidelines can be found in the “”Proposals on the Official PIA Guidelines (I)－(IV),” Russell Horng, NBS (March－November 1997).

[5] Article 56 of the Patent Law of Chinese Taipei.

[6] See Chapter 10 of Patent Law－A Practitioner’s Guide, Ronald B. Hildreth, August 1988.

[7] See Pennwalt Redux-Judicial Uncertainty vs. Procrustean Bed－Maxim H. Waldbaum & David Sipiora (AIPLA Q.J., No. 3, 1991)

[8] Malta v. Schlumerich Carillons Inc., 21 USPQ2d 1161 (Federal Circuit 1991).

[9] See Article 21 of the WIPO draft treaty for harmonizing the patent laws throughout the world.

[10] No. 95-1066 (Fed. Cir. 29 November 2000).

[11] “No Equivalents Claims are Permitted on Elements Amended for Patentability,” Patent, Trademark & Copyright Journal (1 December 2000); “en banc Federal Circuit Redefines The Doctrine of Equivalents and Prosecution History Estoppel,” Finnegan, Hederson, Farabow, Garrett & Dunner, L.L.P. (5 January 2001).

[12] Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., No. 00-1543, review sought 9 April 2001.

The content was published in the first issue of the “Asia IP INFORMED ANALYSIS” on MAY 2022 VOL 14 ISSUE 5.

目錄

I. Taiwan Intellectual Property Office recently completed the following projects:

II. Taiwan Patent Search Center

III. TIPO’s Global Patent Search System

IV. TIPO Utilizes Modern Technologies to Facilitate Patent Examinations

V. TIPO Has Sped up Patent Examination Efficiency in Recent Years

VI. Industrial Co-examination Mechanism

VII. TIPO and PSC Held Competitions for Patent Search and Patent Portfolio

VIII. PSC Completed Industry Patent Analysis Reports

I. Taiwan Intellectual Property Office recently completed the following projects:

Taiwan Intellectual Property Office (“TIPO” for short) completed the following projects before the end of 2021:

(1)   Project to improve Taiwan patent search application environment; and

(2)   Project to improve patent portfolio and capability for industry analyses.

This article will try to summarize the background and outcomes of the above projects.

II. Taiwan Patent Search Center

TIPO established “Patent Search Center (PSC for short)” on March 15, 2012 and the Director General of TIPO acts as the president of PSC.  At the beginning, PSC recruited quite a few experienced patent examiners as its experts to proceed with prior art searches for the TIPO and the missions of PSC can be separated into the following stages:

(1) First Stage (from 2012 to 2014):

Missions: (A) Conducting prior art searches to support TIPO’s patent examinations; and

(B)   Establishing PSC’s internal patent management system (first phase).

(2) Second Stage (from 2015 to 2016):

Missions: (A) Conducting prior art searches to support TIPO’s patent examinations;

(B) Establishing PSC’s internal patent management system (second phase); and

(C)   Providing patent search services for outside clients (trial operation stage).

(3) Third Stage (from 2017 till now):

Missions: (A) Conducting prior art searches to support TIPO’s patent examinations;

(B)   Improving PSC’s patent knowledge management platform (final phase);

(C)   Providing patent search services for outside clients (formal operation stage);

(D)   Acting as one of the professional organizations in Taiwan designated by Judicial Yuan to conduct patent infringement evaluations; and

(E)   Providing industry patent analyses for the society.

PSC had accomplished the following mission targets in the period from 2018 to 2021 (see Table 1):

Table 1

III. TIPO’s Global Patent Search System

1. Establishment of Global Patent Search System

TIPO continuously cooperated with international organizations in recent years so as to introduce foreign patent and non-patent databases, such as EPOQUE.Net, STN (mainly for prior art references in chemical field), Derwent Innovation (DI).  TIPO also closely cooperated with primary foreign patent offices, such as World Intellectual Property Organization (WIPO), United States Patent and Trademark Office (USPTO), European Patent Office (EPO), China National Intellectual Property Administration (CNIPA), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and the patent offices of southeast Asian countries, totally 105 patent offices, and thus successfully established a Global Patent Search System (GPSS).

2. The contents and scale of GPSS

TIPO successfully made good connections with primary foreign patent offices so that the TIPO’s patent resources may synchronize with those of international patent search systems.

The total number of patent references and patent pre-grant publications included in GPSS has already increased from 100,421,457 in 2020 to “140,982,505” till the end of 2022, with a growth rate of 40.39%.  GPSS also increased 26,208,202 pages of Image files and text files in 2021.

GPSS provides several benefits to the local users and foreign clients through the services of local patent firms and research institutes to save or minimize their expenses to establish private patent databases and remove obstacles to cross-border patent searches.

In 2021, GPSS was visited and used by local users from enterprises, patent law firms, universities and research institutes for 2,130,315 times.

The average response time for each step or click using the GPSS was 1.92 seconds in 2020 and 1.85 seconds in 2021.  The satisfaction survey made by TIPO regarding the efficiency of using GPSS has reached 81.3%.  According to a satisfaction questionnaire survey in 2021, the proportion of users in local industries reached 53.90%, and the overall satisfaction rate reached 86%.

3. The features and other functions of GPSS

To reinforce the functions and usability of GPSS, TIPO proceed with electronic operations including imaging and digitization operations for patent documents.  The digitization operation uses the latest Optical Character Recognition (OCR) technology to capture the text parts in the scanned image files and convert their structured text data into XML data format so as to facilitate the access of GPSS and the identification of certain paragraphs of uncovered patent documents and specific pages through internet.

Users may also download complete version of any patents/application publications filed with TIPO and foreign patent offices through GPSS without service fee.

To comply with the Net Zero Carbon Emissions policy of the Ministry of Economic Affairs (MOEA) of Taiwan, GPSS particularly provides “Green Technology Categories” following WIPO’s invention classifications of green catalog including alternative energy, transportation, energy saving, waste management, agriculture & forestry, and administration, regulation & design.  “Green Technology Categories” provide one-click function for searching related green technologies and also include a number of reports and articles dealing with green technology related research and trend to facilitate users’ researches and accelerate the development of inventions regarding green technologies.

The TIPO now endeavors to increase other useful functions for GPSS.  For example, GPSS will be able to disclose all references cited during examination stage(s) of the patents/application publications to be searched, the relation chart of all references, and the whole texts and particulars of the references cited.  GPSS may also disclose “patent family” for all uncovered patents/application publications.

IV. TIPO Utilizes Modern Technologies to Facilitate Patent Examinations

1. Online examinations

TIPO started to proceed with Online Patent Examinations for the “first stage” of examination of “invention” patent applications and “utility model” applications in recent years.  The online examinations rate for “invention” patent applications and “utility model” applications in the first stage has reached 100% before the end of 2021.

TIPO also made trial implementations of online examination for “design” applications in 2021 and the online examination rate has been up to 85% before the end of December 2021 (see Figure 1).  TIPO has proceeded with full (100%) online examination for “design” applications from January 2022.

2. AI-assisted examination

In the near future, online examination will be implemented through whole examination procedure of patent applications so that administrative time and costs as well as burden of examiners and administrative work can be significantly reduced.  The digitized information of electronic files and the information of the examination process may serve as good basis for future developments of cross-border electronic exchange or AI-assisted examination so as to improve examination quality and efficiency.

It is certainly expected that the online examinations for patent applications will reduce the time for prosecution and the applicants’ inventions/creations may have better competitiveness in markets through the improved patent databases and the online examinations.

V. TIPO Has Sped up Patent Examination Efficiency in Recent Years

In recent years, TIPO has invested a lot of information funds to provide the patent examiners with more internal and external patent and non-patent search resources.  At the same time, PSC assists TIPO to carry out the search of prior art references to proceed with substantive examinations so as to accelerate the procedure of patent examinations.  Acceleration of examinations, particularly the substantive examinations for invention patent applications, is normally beneficial to applicants to promote industrial innovations and enhance industrial competitiveness.

As can be seen from Figure 2 and Table 2, TIPO’s average completion period (ACP) of the first examination stage of invention patent applications is comparable to that of JPO and KIPO in the past three years.  It is noted, however, that the definition of ACP of substantive examination is not consistent in different countries.  For instance, according to USPTO, the ACP is calculated from the actual filing date to the mailing date of Final Office Action or Notice of Allowance.  For EPO and CNIPA, the ACP is calculated from the date of entering into substantive examination to date of Rejection Decision or Notice of Allowance.  For TIPO, JPO and KIPO, the ACP is calculated from the date of requesting a substantive examination to the date of Rejection Decision or Notice of Allowance.

Average Completion Period (ACP) of Examinations

Table 2

The author of this article has actual experiences in assisting domestic and foreign applicants to seek patent protections in Taiwan, China and many other countries for more than 35 years so that the author may have position and capability to made some comparisons about the efficiency and quality of examinations made by primary patent offices in the world, particularly the Patent Offices and Intellectual Property Offices listed in the above Table 2.

According to the author’s observations in the past ten years, TIPO has not only significantly shortened its ACP of examination from 26 months in 2015 to 13.95 months in 2021 but also well improved the qualities of formal and substantive examinations of invention patent applications.

VI. Industrial Co-examination Mechanism

TIPO recently made a trial implementation of an industrial co-examination mechanism.  The purpose of such mechanism is to invite competent and appropriate experts from research institutes, universities, engineering associations and/or high-tech enterprises, in particular technical fields to provide proper technical opinions for the examiners’ reference in case the TIPO does not have suitable examiners with such technical backgrounds or capability or needs second opinions.

In 2021, TIPO invited a number of experts from 157 high-tech enterprises and public engineering associations to provide technical opinions directed to specific technical issues to facilitate substantive examinations for 159,652 patent applications.

VII. TIPO and PSC Held Competitions for Patent Search and Patent Portfolio

In order to stimulate diversified industry analysis and patent portfolio skills, TIPO and PSC held competitions for patent searches, analyses and patent portfolio in 2021.  National Taiwan University, National Chung Hsing University, National Cheng Kung University, IP Management & Promotion Administration Center at Taiwan (IMPACT), and Taiwan Patent Attorneys Association acted as co-organizers for competitions.  The individuals who attended the competitions came from 53 teams, such as well-known domestic enterprises, universities and academic research institutions.

All competition teams were requested to carry out all patent searches and analyses by using GPSS.

The purposes of such competitions are to provide opportunities and channels for domestic enterprises, universities and academic research institutions to discuss and exchange opinions and experiences in patent analyses, build better patent portfolios, and create more opportunities of close cooperation between industries and universities.

VIII. PSC Completed Industry Patent Analysis Reports

PSC carried out two Industry Patent Analysis Reports for each year from 2018 to 2021.  The PSC’s reports are shown in the following Table 3:

Table 3

The Industry Patent Analysis Reports have already been published to the general public by PSC in 2020 according to the policy of TIPO.

According to the records, the entities or individuals who requested the Industry Patent Analysis Reports of the 2019 year, 57% came from patent and trademark firms, 12% came from manufacturing enterprises, and 9% came from research institutes.

The entities or individuals who requested the Industry Patent Analysis Reports of the 2020 year, 25% came from manufacturing enterprises, 17% came from patent and trademark firms, and 17% came from research institutes.

The entities or individuals who requested the Industry Patent Analysis Reports of the 2021 year, 32% came from manufacturing enterprises, 23% came from research institutes, and 17% came from patent and trademark firms.

The records reveal that more and more manufacturing enterprises believe that the PSC’s Industry Patent Analysis Reports are valuable to them to implement appropriate patent analysis and portfolio so as to promote business in the markets.