12.30.2018
Whether claims defined by a value range necessarily constitute selection inventions based on litigation decisions by the Taiwan Intellectual Property Court
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BY STELLAR J. H. LIN
According to the requirements of the Patent Examination Guidelines in Taiwan, a selection invention is a selection of a narrow concept within a known wider concept as a patentable feature, and is common in inventions pertaining to the fields of chemistry and materials science. The Patent Examination Guidelines further stipulate that the determination of the inventiveness of a selection invention is stricter, wherein the steps of determination include deciding whether the selected portion generates unpredictable effects over the prior art to confirm whether the selection invention can be easily accomplished.
In a patent litigation decision issued on May 31, 2018 (Case No.: 106 Xing Zhuan Su No. 71), the Intellectual Property Court indicated that selection inventions are directed to a part of components, a sub-group or a sub-range which is not specifically disclosed but is selected from a wider known group or range to reach a certain purpose. If the patent at issue has certain features including a limited value range which are not mentioned in the prior art, the patent at issue does not qualify as a selection invention.
In a further patent litigation decision issued on August 23, 2018 (Case No.: 107 Xing Zhuan Su No. 29), the patent at issue was directed to screw mechanical structures. The Intellectual Property Court indicated that the patent at issue did not belong to inventions pertaining to the fields of chemistry or materials science, the limited value range in the patent at issue was not described in the cited documents, and the patent at issue generated unpredictable effects over the prior art and could not be easily accomplished. Hence, the patent at issue did not qualify as a selection invention.
Based on the abovementioned decisions, claims defined by a value range do not necessarily constitute selection inventions. The determination of a selection invention depends on whether the claims are directed to a part of components, a sub-group or a sub-range which is not specifically disclosed but is selected from a wider known group or range to reach a certain purpose.
According to the requirements of the Patent Examination Guidelines in Taiwan, a selection invention is a selection of a narrow concept within a known wider concept as a patentable feature, and is common in inventions pertaining to the fields of chemistry and materials science. The Patent Examination Guidelines further stipulate that the determination of the inventiveness of a selection invention is stricter, wherein the steps of determination include deciding whether the selected portion generates unpredictable effects over the prior art to confirm whether the selection invention can be easily accomplished.
In a patent litigation decision issued on May 31, 2018 (Case No.: 106 Xing Zhuan Su No. 71), the Intellectual Property Court indicated that selection inventions are directed to a part of components, a sub-group or a sub-range which is not specifically disclosed but is selected from a wider known group or range to reach a certain purpose. If the patent at issue has certain features including a limited value range which are not mentioned in the prior art, the patent at issue does not qualify as a selection invention.
In a further patent litigation decision issued on August 23, 2018 (Case No.: 107 Xing Zhuan Su No. 29), the patent at issue was directed to screw mechanical structures. The Intellectual Property Court indicated that the patent at issue did not belong to inventions pertaining to the fields of chemistry or materials science, the limited value range in the patent at issue was not described in the cited documents, and the patent at issue generated unpredictable effects over the prior art and could not be easily accomplished. Hence, the patent at issue did not qualify as a selection invention.
Based on the abovementioned decisions, claims defined by a value range do not necessarily constitute selection inventions. The determination of a selection invention depends on whether the claims are directed to a part of components, a sub-group or a sub-range which is not specifically disclosed but is selected from a wider known group or range to reach a certain purpose.
