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TIPO completes revision to Directions for Determining Patent Infringement

  • Date Posted:2016-04-01

In 2014, TIPO began revising Directions for Patent Infringement Assessment. This was in response to the changes in patent infringement assessment and to stay in line with Patent Act amendment. The revision was made with reference to patent infringement rulings and documents in the US, Japan and China, and after seven meetings in 2015. On February 5, 2016, TIPO published the revision, renamed Directions for Determining Patent Infringement.


The key points are divided into Part I “Determining infringement of invention and utility model patents” and Part II “Determining infringement of design patents.”


Part I “Determining infringement of invention and utility model patents” has four chapters. The key revisions include: (i) Procedures are adjusted and streamlined. The “Reverse doctrine of equivalents” is removed from the procedure; (ii) A “preamble” is added. Explanations of “claims of utility model patents with non-structural features” and “product-by-process claims” are added; (iii) The “means-plus-function claim” is added as a new method for determining infringement; (iv) The “all elements rule” originally applied to “literally read-on” prior determination is now applied to “doctrine of equivalents” determination; (v) The “all elements rule” and “dedication rule” are added to the limitations of the doctrine of equivalents in addition to “file wrapper estoppel” and “practicing the prior art defense”; and (vi) The “prosecution history estoppel” is revised to be in line with the Festo rulings.


Part II “Determining infringement of design patents” has four chapters. The key revisions include: (i) The “point of novelty” step is removed from the procedure; (ii) The two subjects in the determination are reduced to one. This one subject should be an “ordinary customer” who is reasonably familiar with the objects of the patent in suit and who is familiar with the skill in the art; (iii) The phrase “explaining new designs of a patent application” is revised to “ascertaining the scope of a patent.” There is elaboration on the elements of the scope; (iv) The “three way comparison” is added to the determination of similar designs; and (v) New contents and cases are added that are related to the new types of protectable design (partial design, graph design, design of a set of articles, and derivative design) allowed for pursuant to the amended Patent Act of 2013.

  • Update Date:2016-04-01  Visitors:1149