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Taiwan: The public dedication doctrine

Since being established in 2008, the Taiwan Intellectual Property Court has in its judgments adopted successively the public dedication doctrine developed from US practice. For instance, in a decision rendered in a patent infringement case in 2012, the IP Court pointed out that: for an embodiment disclosed in the specification but not claimed in the claims, it should be deemed to be dedicated to the public, and the claims may not be substantially broadened or altered after publication of the allowance of the patent application based on the disclosure of the specification. This may prohibit an applicant from disclosing his invention in a broader sense in the specification but claiming a narrower scope in the claims so as to facilitate allowance and later asserting a broader scope based on the specification in case of infringement disputes.

Similarly, in a draft of the Patent Infringement Assessment Guidelines published by the IP Office in August 2015 to seek public opinion on the draft, the public dedication doctrine is included as a limitation on the doctrine of equivalents.

While the introduction of the public dedication doctrine to a suitable extent is helpful for the public good, the drafting of the specification and claims is made relatively more difficult. Applicants not only have to be more meticulous in the drafting of the specification and claims, they need to constantly pay attention to whether the claims cover all the modes or ranges enumerated in the specification when amending the claims in reply to an Office action. For an invention patent application which is allowed without any Office actions, the applicant should check the claims to see whether they cover all the modes or ranges enumerated in the specification. In the case of omission, a divisional application might need be filed within 30 days from receipt of the notice of allowance to protect the subject matter not covered by the allowed claims.

Jun-Yan Wu

Saint Island International Patent & Law Offices7th Floor, No. 248, Section 3Nanking East RoadTaipei 105-45, Taiwan, ROCTel: +886 2 2775 1823Fax: +886 2 2731

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