|標題:||論申請專利範圍明確性要件之判斷-從美國最高法院Nautilus v. Biosig案出發|
Study of Determination on Definiteness of a Patent Claim-Start From the Holdings in the Nautilus Case by Supreme Court of the United States
|關鍵字:||明確性;申請專利範圍;合理確定;請求項;所屬技術領域之通常知識者;definiteness;claim;reasonable certainty;skill in the art|
Taiwan Patent Act stipulates that each claim shall be disclosed in a clear manner in Paragraph 2 of Article 26, which is also known as the requirement of definiteness. In violation of this requirement, a patent application under examination shall be rendered a decision of rejection while a granted patent shall be revoked due to an invalidation action according to Paragraph 1 of Article 46 and Article 71, respectively. However, the Patent Act does not well-define the “clear” term to give the standard of determination upon definiteness of a patent claim. An empirical research in this article shows that the determination upon definiteness of a patent claim of an under-examined patent application is not consistent with that of an adjudicated patent litigation case. This article therefore aims to clarify the essential and purpose of the requirement of definiteness by starting from study of the definiteness determination standard held in the Nautilus case by Supreme Court of the United States in year 2014. It is proposed that whether a patent claim is indefinite should be determined in view of the essential and purpose and several factors including the level of ordinary skill in the art. The essential and purpose of other requirements in Article 26 are also discussed, and a patent claim examining process taking into consideration of different application order of these requirements is proposed. This article concludes that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention even after reasonable efforts at claim comprehension are taken.
|Appears in Collections:||Thesis|