The Intellectual Property Court rendered the 103-Hang-Zhuan-Su-70 Administrative Decision of January 15, 2015 (hereinafter, the "Decision"), in which it was expounded that the specification of a computer software patent should specifically indicate the structure or steps corresponding to the software functions rather than merely steps or functions in commercial domains.
According to the facts underlying the Decision, the Plaintiff applied to the Defendant to patent the "Map-based Tourist Information Management Method" (hereinafter, the "Patent-in-suit"). However, the Defendant rendered, as a result of its examination, a disposition which "concluded that the patent should not be granted" due to the Plaintiff's violation of Article 26, Paragraph 2 of the Patent Law. Dissatisfied, the Plaintiff brought this action after his administrative appeal was rejected.
Article 26, Paragraph 2 of Patent Law specifically provides: "Claim(s) shall define the claimed invention, and more than one claim may be included therein. Each claim shall be disclosed in a clear and concise manner and be supported by the specification."
According to the interpretation in the Decision, when patent claims are drafted with wordings that depict the means (steps) or functions, the explanation in the claims should cover the structure, materials, steps and scope of equivalence corresponding to the functions described in the specification. When wordings for means (steps) or functions are used, a specification should be tasked with an obligation of clear and full disclosure. In addition, since the interpretation of wordings for means (steps) or functions in claims should include the contents of a specification, when a specification violates the prerequisites of embodiments, such claims would be also unclear and unsupportable by the specification.
It was further expounded in the Decision that when an algorithm is disclosed in a specification, it is up to individuals with ordinary skills in the art of the invention to determine if full disclosure is made. However, failure to make detailed disclosure on the ground that the entire algorithm can be easily completed by people with ordinary skills in the art is not permitted, since the applicant is still obligated to make clear and full disclosure when using the wordings for means (steps) or functions.
It was further determined in the Decision that the contents of the descriptions in the claims in the Patent-in-suit pertain to commercial processes rather than the algorithm used for the software design.Even if the algorithm can be easily completed by people with ordinary skills in the art of the invention, detailed disclosure is still required, and such processes cannot be skipped in the specification simply because they are prior art. Since the specification of the Patent-in-suit in this matter fails to depict the structure or steps corresponding to the technical features, resulting in claims of the Patent-in-suit which are not supported by the specification, this certainly violates Article 26, Paragraph 2 of the Patent Law. Because the original disposition rejected the application for valid legal basis, the Plaintiff's complaint was rejected.