Taiwan: The public dedication doctrine

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Taiwan: The public dedication doctrine

Since being established in 2008, the Taiwan Intellectual Property Court has in its judgments adopted successively the public dedication doctrine developed from US practice. For instance, in a decision rendered in a patent infringement case in 2012, the IP Court pointed out that: for an embodiment disclosed in the specification but not claimed in the claims, it should be deemed to be dedicated to the public, and the claims may not be substantially broadened or altered after publication of the allowance of the patent application based on the disclosure of the specification. This may prohibit an applicant from disclosing his invention in a broader sense in the specification but claiming a narrower scope in the claims so as to facilitate allowance and later asserting a broader scope based on the specification in case of infringement disputes.

Similarly, in a draft of the Patent Infringement Assessment Guidelines published by the IP Office in August 2015 to seek public opinion on the draft, the public dedication doctrine is included as a limitation on the doctrine of equivalents.

While the introduction of the public dedication doctrine to a suitable extent is helpful for the public good, the drafting of the specification and claims is made relatively more difficult. Applicants not only have to be more meticulous in the drafting of the specification and claims, they need to constantly pay attention to whether the claims cover all the modes or ranges enumerated in the specification when amending the claims in reply to an Office action. For an invention patent application which is allowed without any Office actions, the applicant should check the claims to see whether they cover all the modes or ranges enumerated in the specification. In the case of omission, a divisional application might need be filed within 30 days from receipt of the notice of allowance to protect the subject matter not covered by the allowed claims.

Jun-Yan Wu


Saint Island International Patent & Law Offices7th Floor, No. 248, Section 3Nanking East RoadTaipei 105-45, Taiwan, ROCTel: +886 2 2775 1823Fax: +886 2 2731 6377siiplo@mail.saint-island.com.twwww.saint-island.com.tw

more from across site and SHARED ros bottom lb

More from across our site

Paul Hastings and Smart & Biggar also won multiple awards, while Baker McKenzie picked up a significant prize
Burford Capital study finds that in-house lawyers have become more likely to monetise patents, but that their IP portfolios are still underutilised
Robert Reading and Faidon Zisis at Clarivate unpick some of the data surrounding music-related trademarks
China's latest IP litigation statistics and a high-profile hire by O'Melveny were also among the top talking points this week
David Aylen, who spent more than 20 years at Gowling WLG, has joined United Trademark and Patent Services as of counsel in the UAE
Europe is among the most lucrative legal markets for PE firms to bet on, but clients’ reactions will decide whether external investment drives success
Rulings of note covered pre-June 2023 infringements and jurisdiction over non-UPC states, while winners of Managing IP’s EMEA Awards acted in multiple cases
Jason Blair, a former special marks examiner, said Dykema’s Texas presence will help him build deeper connections with clients
Lee Curtis and Rachel Platts at HGF discuss the rise of the ‘intention economy’ and its impact on trademark law
Martin Wintermeier discusses taking a hit for clients, not letting stress get to you, and why being a criminal defence lawyer might have been fun
Gift this article