TIPS^®  Taiwan Intellectual Property Special

Means-Plus-Function Claims Are Formally Accepted in Taiwan

A “means-plus-function claim” is a patent clam citing “means for” performing a specified function, instead of citing an element in precise detail. This “means for” language will include all the methods of performing the function as described in the patent disclosure and the equivalents of those methods. It has been a controversial issue in the protection scope among the patent community in this country. Some examiners in the Taiwan Intellectual Property Office (TIPO) like it; some don’t.

While some countries are still reluctant to accept “means-plus-function” claims, e.g. Japan, the drafted amendment to the Enforcement Rules of Patent Law in Taiwan (Patent Enforcement Rules) intends to allow “means-plus-function” language to define the scope of the patent claims. Paragraph 8 of Article 18 of the Patent Enforcement Rules provides that “[f]or an invention with a combination of plural technical features, its patent claim may be described by means or methods for performing certain functions. The interpretation of the claim scope shall include structure, material or movements corresponding to the function and the equivalents thereof.” The purpose is to give the applicant a claim of sufficient scope to cover the true invention without the need for the applicant to include a list of alternatives in the specification, and therefore simplified the drafting of patent claims.

Since the courts in Taiwan are used to interpret “means-plus-function” claims in a various way, the Patent Enforcement Rules adopt a very conservative concept, i.e. in order to clarify the patent protection scope, the interpretation of a “means-plus-function” claim is limited. Moreover, the scope of equivalents covers only those described in the embodiments of the specification. Therefore, if “means-plus-function” language appears in a claim, it is highly recommended that a few more preferred embodiments be added in the specification to describe equivalent structures or materials, and additional dependent claims be included for each of the embodiments disclosed in the specification. This can be helpful to protect the scope of the patent, especially when potential infringement is expected.