The Supreme Administrative Court rendered the 103-Pan-533 Decision of September 29, 2014 (hereinafter, the "Decision"), holding that the claims of invention patent rights shall be based on the claims as filed, and that although the descriptions and drawings may be referenced at the time of construction, an overall observation of the patent specification is still required along with an understanding of the objectives, functions and efficacies of the invention. It was also indicated that embodiment examples set forth in a patent specification are merely examples, which shall not serve as the basis for expanding or reducing the patent claims.
According to the facts underlying this Decision, the Appellant applied to the Intellectual Property Office (hereinafter, the "IPO") for the "Audiovisual Signal Transmission and Reception Handling Device" patent, which is the patent-in-suit granted on February 18, 2004. The Intervenor subsequent filed invalidation proceedings against it. The IPO rendered a disposition as a result of its examination, finding that the invalidation was invalid. Dissatisfied, the Intervenor filed administrative appeal, which caused the original disposition to be reversed according to the Appellee's decision on the administrative appeal. Dissatisfied, the Appellant brought administrative action. After this lawsuit was remanded, the original trial court rejected the complaint of the Appellant. As a result, the Appellant filed this appeal.
According to the Decision, the scope of invention patent rights shall be based on the claims set forth in the specification, and invention descriptions and drawings may be referenced in constructing the claims, as specifically indicated in Article 56, Paragraph 3 of the Patent Law effective at the time of the patent grant. However, an overall observation of the patent specification is still required to understand the objectives, functions and efficacies of such invention.The embodiment examples set forth in a patent specification are merely examples of embodiment set forth for such patent and cannot serve as the basis for expanding or restricting the claims of such patent. Otherwise, this would be tantamount to expanding or reducing matters or restrictive terms not mentioned in patent claims according to the contents of embodiment examples and would result in changes to the objective scope of patent claims. The construction of the claims of the patent-in-suit in the original decision which reduces the claims of the patent-in-suit based on the embodiment examples set forth in the specification of the patent-in-suit is not consistent with the above requirement. The criticism in the appeal reasons that the original trial court violates laws and regulations is not without basis. Therefore, the original decision was further reversed and remanded.