Judicial Power to Correct Disputed Patent Claims under the American Patent Case Law: A Comment on Taiwan Intellectual Property Court Civil Judgment (99) Min Zhuan Shang Zi No.5 (2010)

Abstract

A claim defines the scope of a patentee’s exclusive right. When a claim has an error, competitors of a patentee might not be subject to the constraint of the patent because such the error might cause the claim to be invalid for indefiniteness. However, that is not always the case. In the United States, courts have authority to correct minor errors in a claim, even though such the minor errors can cause the claim to be invalid. The test for claim correction has two prongs: (1) the correction is not subject to reasonable debate in view of claim language and the specification, and (2) the prosecution history does not suggest a different interpretation. In addition, an error has to be apparent, evident, or obvious on the face of the patent. Moreover, when applying the first prong, the Federal Circuit requires the claim construction of a corrected claim is not subject to reasonable debate. Unlike the United States, the judicial power to correct a claim is not well-defined in Taiwan. This article comments on one decision issued by the Taiwan Intellectual Property Court (“TIPC”), where the TIPC did not define the meaning of “error” that it has authority to correct. The TIPC was taking over the patent agency’s function that is well defined in the Taiwan Patent Act. Unlike the Federal Circuit, the TIPC did not provide any legal theory to support its authority to correct a claim. Thus, this paper urges the TIPC to clarify its position or to admit its wrongful decision in later cases.