The Doctrine of Equivalents in Various Patent Regimes: Does Anybody Have It Right?

The doctrine of equivalents is arguably one of the most important aspects of patent law. The protection a patent confers is meaningless if its scope is determined to be so narrow that trivial changes to a device bring it out of the bounds of the patent. One of the greatest challenges courts and legislatures therefore face in patent law is to create rules for determining patent scope that maintain the protection a patent is meant to confer while still keeping the patent monopoly within reasonable bounds. Despite the general unity in patent laws among developed countries, the difficulty of this task has led to different results in different jurisdictions. Many jurisdictions have chosen to determine patent scope under a doctrine of equivalents, while others have maintained the position that adequate scope can be found within the meaning of a patent’s claim. Even jurisdictions which agree that a doctrine of equivalents should apply differ significantly in its application. This Article provides an examination of four patent jurisdictions — the United States, the United Kingdom, Germany,and Japan — and their separate answers to the question of patent scope. This Article does not purport to decide which jurisdiction has the right solution, but merely points out that different solutions can be and have been found for the question of equivalents. Although a traditional case of patent infringement under the doctrine of equivalents may find protection under all four jurisdictions, the laws of these countries start to diverge on questions regarding after-arising technology, the essential elements of a patent claim, and equivalents that clearly fall outside the language of a claim. One cannot answer the question, “Does anybody have it right?” without first considering these issues

Credible Utility in Patent Law

This paper discusses the law relating to the patentability of products and methods of their use. Specifically, the paper examines the circumstance where an inventor has brought forth a product which has no known credible utility or industrial applicability, but adds some guesses to her patent application in the hopes that if she guesses correctly, she will obtain a valuable patent. If one of the guesses proves correct, should this be treated in essence as a constructive reduction to practice sufficient to justify the grant of a valid patent? This paper suggests that the proper answer should be no because a sound patent system should not encourage guessing where there is no sound scientific basis for the guess. My analysis of how such guesses are treated in patent law starts with one of the most remarkable patent cases of the last decade, Conor Metasysystems v. Angiotech. It will end with a possible explanation of why the Federal Circuit may have created the new doctrine of description as applied to originally filed claims

Festo and the Doctrine of Equivalents: Implications for Patent Infringement Litigation

This article provides an in-depth analysis of the Federal Circuit’s en banc decision in Festo Corporation v. Shoketsu Kinzokukogyo Kabushiki Co., Ltd.Overall, “the Federal Circuit failed to expressly limit the application of the doctrine of equivalents to those accused products or processes that were not reasonably foreseeable at the time of the patent, but did limit the doctrine of equivalents by expanding the reach of the doctrine of prosecution history estoppel.” The article notes that the “key issue[s] left unsettled by Festo [are] the status of prosecution history by argument as well as the meaning of an amended limitation.

The America Invents Act, Its Unique First-to-File System and Its Transfer of Power from Juries to the United States Patent and Trademark Office

The signing of the Leahy-Smith America Invents Act (AIA) by President Obama on 16 September 2011 is a landmark event in the history of American patent law. It has already been the subject of numerous articles on the web and in the law reviews as well as in the popular press. I have no intention here of going into all the details of the AIA, I just want to leave the reader with a sense for its eventual impact on American patent law. All the details are to be found in its 37 sections whose titles give the reader a good sense of the scope of the AIA. In one sense Section 1 says it all

Foreword

On the morning of July 22, 2011, many friends and admirers of Chief Judge Rader gathered at the University of Washington’s High Technology Protection Summit to focus on the Chief Judge’s many important opinions written during his more than 20 years on the Court of Appeals for the Federal Circuit. The morning consisted of two lengthy sessions following a keynote speech by a former student of mine, now a very experienced patent judge, the Honorable Marilyn L. Huff. The morning concluded with an address by the President of the University of Washington, Michael K. Young. Because President Young was instrumental in making the Chief Judge a permanent member of The George Washington University Law School faculty, his talk was the perfect capstone to the morning’s events. Much of the afternoon was focused on Chief Judge Rader’s influence on the patent laws of countries other than the United States. Many of the speakers were kind enough to prepare formal remarks for the conference, and these papers form the basis for this festschrift

The Use of the Doctrine of Equivalents to Fix Mistakes a Mistake?

Through empirical research, this article examines whether the patent system of the United States should limit the doctrine of non-textual infringement to obvious after-arising equivalents. Using five decisions from multiple jurisdictions, including the United States, Japan and Great Britain, the article explains the various patent systems and limitations those patent systems face in deciding whether an infringement is an obvious equivalent. The article then discusses the interpretations of patent claims and the policy implications of those interpretations. The article presents the policy argument for patentees to cover the costs associated with patent prosecution because the alternative would be burdensome costs placed on the public. The article then identifies prosecution history estoppel and prior art rejections as limitations that are eliminated by limiting the doctrine of non-textual infringement to obvious after-arising equivalents. It concludes that limitation on the doctrine of equivalents is consistent with the Supreme Court’s established view that the time of infringement is used for measuring equivalency

A Grace Period and European Patent Law: It\u27s Time for Change

This article begins by discussing the first-to-file and first-to-invent approaches to inventions. Next, the article describes how each of the two systems defines “prior art” and argues that employing the first-to-invent approach has two problems: a lack of incentive to file early and difficulty in advising an inventor about what qualifies as prior art. In the United States, something counts as prior art “[i]f the publication date is more than one year before the actual filing date.” The article concludes that Europe would benefit from adding a grace period because it would make the system fairer and create more similarity between the European and American systems “without creating an unacceptable level of uncertainty.

The New World of Patents Created by the Court of Appeals for the Federal Circuit

The purpose of this Article is to outline the creation of this new circuit and to analyze its position on several substantive issues. Part I discusses the origin and power of the Federal Circuit. Part II analyzes the court\u27s recent decisions on the issues of nonobviousness, infringement, inequitable conduct, patent misuse, and jury trials. This Article concludes that the Federal Circuit has in general performed well, but there are areas of patent law that must be refined for the court to further its intended goals

The Doctrine of Equivalents in Various Patent Regimes: Does Anybody Have It Right?

The doctrine of equivalents is arguably one of the most important aspects of patent law. The protection a patent confers is meaningless if its scope is determined to be so narrow that trivial changes to a device bring it out of the bounds of the patent. One of the greatest challenges courts and legislatures therefore face in patent law is to create rules for determining patent scope that maintain the protection a patent is meant to confer while still keeping the patent monopoly within reasonable bounds. Despite the general unity in patent laws among developed countries, the difficulty of this task has led to different results in different jurisdictions. Many jurisdictions have chosen to determine patent scope under a doctrine of equivalents, while others have maintained the position that adequate scope can be found within the meaning of a patent’s claim. Even jurisdictions which agree that a doctrine of equivalents should apply differ significantly in its application. This Article provides an examination of four patent jurisdictions — the United States, the United Kingdom, Germany,and Japan — and their separate answers to the question of patent scope. This Article does not purport to decide which jurisdiction has the right solution, but merely points out that different solutions can be and have been found for the question of equivalents. Although a traditional case of patent infringement under the doctrine of equivalents may find protection under all four jurisdictions, the laws of these countries start to diverge on questions regarding after-arising technology, the essential elements of a patent claim, and equivalents that clearly fall outside the language of a claim. One cannot answer the question, “Does anybody have it right?” without first considering these issues