The granting of a patent is a social contract, under which the inventor discloses his invention in exchange for patent protection. Therefore, Article 26 of the current Patent Act stipulates that the description of a patent specification shall fully disclose the invention in a manner clearly and sufficiently for it to be understood and carried out by others (Paragraph 1); and that “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 (Paragraph 2).
However, the application of the above provisions will result in a practical dispute. When judging whether or not the description of a patent specification is in conformity with the requirement of clear and sufficient disclosure, should the “claim(s) of the patent application” or the “claimed invention” be the subject matter to be examined? The Supreme Administrative Court has expressed its opinions in the 2018 Pan-Zi No. 161 judgment made on March 29, 2018.
In this case, the patentee argued that, the examination of the requirement of clear and sufficient disclosure should be conducted with the claims as the subject. Each claim should be examined individually to see whether the technical characteristics thereof as disclosed in the patent specification were in conformity with the "clear and sufficient disclosure" requirement. As for the part that was not covered in the claims, there is no need to examine whether the specification has sufficiently disclosed the invention in a clear manner. There are a total of 29 claims contained in the disputed patent, and only some of the claims include the technical feature of “stopping the radio frequency identification function when being cut.” The rest of the claims did not cover “stopping the radio frequency identification function when being cut” and hence, it is not necessary to examine whether such claims have violated the requirement of clear and sufficient disclosure.
However, the Supreme Administrative Court held that the examination of whether the requirements of sufficient disclosure and enablement has been satisfied should take the “claimed invention” as the subject matter to be examined, rather than each and every one of the claim(s) in the patent application. The reason was: "The claimed invention" refers to the subject matter claimed in the specification for patent protection, rather than the individual claims in the patent application. The description of the claimed invention in the patent specification discloses the specific technical means used to carry out the claimed invention, which is a document of technology, while the claims in the patent application represent the scope of claimed legal rights, which is a document of rights. There is a distinction between the two. In the present case, the content of the specification has clearly disclosed that the main purpose of the claimed invention is "stopping the provision of the radio frequency identification function when the electronic seal is cut," and some of the claims have included such technical feature. Therefore, the description regarding "stopping the provision of the radio frequency identification function when being cut" as contained in the patent specification shall become the subject to be examined in deciding whether the specification has made clear and sufficient disclosure. In the event that all of the embodiments of the disputed patent are in violation of the requirements of clear and sufficient disclosure and enablement, it is certain that no claim could escape the overall scope of the embodiments. Based on this, the Supreme Administrative Court held that the patentee’s above argument was meritless.
The Supreme Administrative Court further stated that, although each paragraph of Article 26 of the Patent Act provided different requirements, the paragraphs were closely interconnected. If the "document of technology," i.e., the patent specification, has met the requirements of clear and sufficient disclosure and enablement, the document of rights, i.e., the claims, would have the premise and basis to be supported by the specification and drawings. However, if the document of technology, say, the patent specification, has failed to meet the requirements of clear and sufficient disclosure and enablement, then even if the claims of the patent application have been supported by the description and drawings, and have conformed to the formal requirements, the specification’s defect of lack of clear and sufficient disclosure and enablement is still incurable. As such, if it has been decided that the specification of the disputed patent invention has failed to meet the requirements of clear and sufficient disclosure and enablement, there is no need to examine whether requirements of Paragraph 3 (the claims shall be supported by the specification and the drawings) or Paragraph 4 (the manners of the disclosure for claim(s)) of the same Article have been met.