Paragraph 4 of Article 58 of the Patent Act stipulates: “The extent of the protection conferred by an invention patent shall be determined by the claim(s), and the description and drawing(s) may be considered as a reference when interpreting the claim(s).” This statute is also applicable to the utility model patent, pursuant to Article 120 of the same Act. The claims are composed of words, and therefore the interpretation of these words often becomes the focus in contentious patent matters. During patent litigation, validity is often challenged based on the prior art. To protect validity, the patentee may narrow the claimed scope through claim interpretation to distinguish it from prior art.

 

However, claim interpretation has its own rules to follow and cannot be done arbitrarily. While the description and drawings may be considered during interpretation, the scope of patent right is based on the wording of the claims. Limitations cannot be imposed solely from the description or drawings if they are not contained in the claim's wording. The Intellectual Property and Commercial Court has once again clearly stated the relevant principles in its Administrative Judgement No. 112-XinZhuanSu-70.

 

The utility model patent in dispute underwent a cancellation action. After examination, the Intellectual Property Office (IPO) issued a decision that “the cancellation action against Claims 1 to 8 is substantiated and these claims should be revoked.” Dissatisfied, the patentee, having seen its administrative appeal dismissed, filed an administrative lawsuit, which was also dismissed by the Court.

 

During litigation, the patentee argued: “The combination of Exhibits 2 and 3 ... failed to disclose all technical features of Claim 1 of the patent in dispute. The technical feature of the steel sheet pile in Claim 1 of the patent in dispute must be vertically arranged, and cannot be horizontally arranged ... After consultations with experts and scholars, it was indicated that, in the field of maritime engineering, the vertical arrangement of steel sheet piles is common knowledge. Additionally, regarding Claim 1 of the patent in dispute, the long axis of the screw rod 203 must be arranged in a direction parallel to the steel sheet pile 206 ... [such are] necessary structural features ….” The Court, however, did not accept the patentee's arguments.

 

The Judgment first elaborated on the principle of claim interpretation: “In interpreting patent claims, it is indeed possible to consider the specification and the drawings ... However, the claims are generic demarcations arrived at from the implementations or embodiments given in the specification, and the drawings only serve to supplement the text in the specification when the text is insufficient ... Therefore, the claim interpretation made with reference to the embodiments in the specification and the drawings should be based on the broadest reasonable interpretation. Unless the specification has expressly stated that the contents of the claims should be restricted to the embodiments and the drawings, it is unacceptable to impose such limitations, let alone alter the scope of patent rights as objectively manifested in the published claims based solely on an interpretation favorable to one party.” Based on this principle, the Court pointed out that the patentee's arguments were merely “introducing into Claim 1 of the patent in dispute the contents of separate elements contained in the specification or drawings, amounting to introducing contents disclosed in the specification or drawings but not contained in the claims, thereby inappropriately altering the scope of patent rights as objectively manifested in the published claims,” and therefore should be dismissed.

 

Accordingly, parties attempting to interpret the claims during patent litigation should pay special attention to the abovementioned principle, in order to persuade the Court to recognize their arguments.