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

Florina Firaru discusses making new connections, the art of flower arranging, and the biggest misconception about IP
The firm, which appointed three IP partners from A&O Shearman, wants to develop a tier one practice in Europe
The England and Wales appeals court handed down its judgment just seven working days after hearing the trademark dispute involving pharma company Merck
A host of law firms from across Europe and beyond helped bring the streaming technology dispute to a close
Hugues Derème, director general of the Benelux IP Office, unveils his vision for the region, how to improve IP awareness, and use of AI
A copyright win for AI firm Anthropic and a new executive order against law firm Jenner & Block were also among the top talking points this week
A principal at Schwegman Lundberg & Woessner explains how AI tools, including DeepIP, can position the firm to help clients
The firm explains why AI-empowered data analytics could make it a more efficient advocate for its clients
Penelope Aspinall, of IP wellbeing charity Jonathan’s Voice, explains why managers should take a three-tiered approach to looking after workers’ mental health
Heath Hoglund talks about the value proposition of patent pools and why it went ahead with its first-ever series of pool meetings in China
Gift this article