Definiteness of Means/Steps-PlusFunction Clams—A Cases Study of Taiwan’s Courts Decisions

Definiteness of Means/Steps-PlusFunction Clams—A Cases Study of Taiwan’s Courts Decisions

 

Title
Definiteness of Means/Steps-PlusFunction Clams—A Cases Study of Taiwan’s Courts Decisions
Author
Jung-Kuang Kuo, Wan-Tsui Chiang
Keywords
Means-plus-function, Steps-plus-function, Functional Claim,
Definiteness, Full Disclosure
Abstract
Article 19(4) of Taiwan’s Enforcement Rules of the Patent Act permits meansplus-function
and steps-plus-function claims. However, without reciting the structure,
material or acts performing the claimed function, claims may face challenges
about the definiteness requirement. One of the related debates is whether the specification
should recite the corresponding structure, material or acts of the claimed
function. This issue has been brought up both in Taiwan and U.S. jurisdictions.
This study compares Taiwan court decisions with the U.S. decisions which touch
on the definiteness of means-plus-function and steps-plus-function claims. We find
that while the U.S. courts require that the specification has to recite the corresponding
structure, material or acts of means-plus-function and steps-plus-function
claims to satisfy the definiteness requirement, Taiwan courts do not adopt the same
standard. This study argues that by requiring specifications disclose the corresponding structure, material or acts implementing claimed function to satisfy the
definiteness requirement, the standard made by U.S. court decisions limits the
metes and bounds of means-plus-function and steps-plus-function claims to a more
reasonable extent in order to prevent the abuse of functional claims. This study further
suggests that Taiwan’s legislative and judicial branches of the government
should adopt the same standard to prevent future definiteness disputes. Additionally,
this study contends that means-plus-function can be used for device claims
while steps-plus-function can be used for method claims. Due to this distinction,
this study concludes that the corresponding disclosure of means-plus-function
claims in the specification should be structures or materials which have concrete
forms, while the corresponding disclosure of steps-plus-function claims in the
specification should be acts which should have no concrete forms.
Abstract Article

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