Patent specifications, claims and drawings are essential documents in patent applications¹; they are distinct but interconnected components and play different roles in patent applications². Specifications provide detailed descriptions of materials, methods and quality standards for interpreting claim terms; claims define the patent scope of legal protection; and drawings offer visual representations that complement the text-based information in the specifications and claims. The claimed scope could be clearly and better defined and comprehensively understood when these documents are well-coordinated. However, conflicts between these documents can lead to issues.
On February 24, 2023, the Intellectual Property and Commercial Court (IPCC) rendered the Xing Juan Hsu Zi No. 42 administrative judgment³ concerning a dispute over a utility model patent titled “Lock Mechanism for Pruning Tools.” The utility model patent application was filed on November 23, 2020. The plaintiff filed an invalidation action with the Taiwan Intellectual Property Office (TIPO) to challenge the validity of this patent on the grounds including inconsistency between the claims and the drawings and lack of inventive step. The IPCC ultimately dismissed the lawsuit and upheld the prior administrative decision made by the TIPO in which the invalidation request was rejected.
 
I. Case Overview
The patent in question, registered as Taiwan Utility Model Patent No. M610779, was filed by the intervening party and pertains to a mechanical locking device for pruning shears. After the patent was granted, the Plaintiff filed an invalidation action against the patent in question, arguing:

1. That the technical solution defined in claim 1 of the patent in question was inconsistent with the disclosures in the patent drawings; and
2. That the patent in question does not involve an inventive step, as the claimed subject matter could allegedly be derived from prior art.

The Intellectual Property Office rejected the invalidation; and the Plaintiff then appealed this decision with the Ministry of Economic Affairs; the appeal was not successful, and the Plaintiff filed an administrative lawsuit with the IPCC. During the examination on the case, The IPCC identified the following key issues:

• Does Claim 1 of the patent in question violate the Patent Act due to the claimed utility model being inconsistency with the disclosures in the drawings?
• Can the cited prior art disclosures deprive the inventive step of the patent in question?

 
II. Court’s Key Findings
1. On the Consistency Between Claim Language and Drawings
The plaintiff argued that the statement in Claim 1, "the abutting surface of the control button is joined with the abutting surface of the locking member," did not match the illustration in Figure 3 of the drawings, which shows a gap between the abutting surfaces of the control button and the locking member.
The court held:

• The term "joined" as defined in the claims must be interpreted in light of the specification and drawings as a whole.
• The specification describes the two abutting surfaces as forming a "co-planar and continuous" interface, which enables the locking mechanism to slide smoothly.
• Any minor illustration discrepancies (e.g., a small gap due to technical drawing choices or chamfered edges) do not negate the written disclosure.
• A person having ordinary skill in the art would understand the claim as supported by the full disclosure, thus conforming the requirements of Article 120 of the Patent Act to which the provisions of Article 26.II of the Patent Act shall mutatis mutandis apply to utility model.

2. On Inventive Step
The plaintiff presented two prior art documents (Evidence 2 (Taiwan Patent No. 0443390) and Evidence 3 (Taiwan Patent No. 0479590)) arguing that the combination of the prior art would make the utility model of the patent in question to be obvious.
The court disagreed:

• Neither evidence disclosed all essential features found in Claim 1, such as:
  • A locking plate embedded in a recessed groove of the control button;
  • Co-planar contact between both components;
  • Dual side rails on the control button for guiding movement.
• The court emphasized that the alleged prior art lacked the structural design ensuring durability, smooth sliding, and strength.
• Simply modifying the technical contents existing in the prior art with hindsight is insufficient to deny inventive step unless a person having ordinary skill in the art would combine them.

III. Legal Significance and Practical Implications
This case clarifies two essential aspects in patent law:

1. Claims interpretation shall be based on the broadest and reasonable construction
   Article 58.IV of the Patent Act stipulates that "the extent of the protection conferred by an invention patent shall be determined by the claim(s), and the description and drawing(s) may be considered as a reference when interpreting the claim(s)," the provisions of which shall mutatis mutandis apply to utility model according to Article 120 of the Patent Act. Due to the ambiguity of words and the susceptibility to misunderstanding, when interpreting the scope of a patent, the specification and drawings must be considered, and the contents of patent specification should be considered as a whole. The scope of protection of a patent is a general definition of the implementation methods or examples contained in the specification, and the role of the drawings is only to supplement the insufficient parts of the specification so that a person having ordinary skill in the art can understand the meanings of the technical features defined in the claims. Therefore, the interpretation of the scope of a patent application made with reference to the examples and drawings of the specification should be based on the broadest and reasonable interpretation of the scope of a patent, and should not be limited by the examples or drawings. Inaccuracies in patent drawings won't necessarily render a claim invalid if the written specification can support the claimed invention or utility model.
2. Inventive Step Must Be Objectively Demonstrated
   Citing prior patent documents is insufficient unless they clearly disclose or suggest the same technical features and provide a logical reason for their combination. Courts remain cautious of arguments based solely on hindsight.

 
IV. Conclusion and Suggestions
The court affirmed the patent’s validity, confirming both compliance with disclosure requirements and inventive step. This judgement confirms that “when interpreting the claims, in principle, the terms used in the claims should be given their broadest, reasonable, and consistent interpretation with respect to the description” as provided in the Patent Examination Guidelines. It reinforces that:

• Patentees must ensure alignment between the specification, claims, and drawings;
• Claims constructions must be based on the broadest and reasonable interpretations;
• When interpreting the scope of a patent, the specification and drawings must be considered, and the contents should be considered as a whole.
• The petitioner of an invalidation action bears a high burden to demonstrate a lack of inventive step through clear, technically supported reasoning, not just speculative combinations.

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¹ Paragraphs I and II of Article 25 of the Patent Act
² Article 26 of the Patent Act
³ The Intellectual Property and Commercial Court 2023 Xing Juan Hsu Zi No. 42 administrative judgment