The doctrine of equivalents is a legal rule in most of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention. A patent is a set of exclusive rights granted by a state to a patentee (the inventor or assignee) for a fixed period of time in exchange for the regulated, public disclosure of certain details of a device, method, process or composition of matter (substance) (known as an invention) which... The examples and perspective in this article or section may not represent a worldwide view. ... Patent claims are usually in the form of a series of numbered expressions, or more precisely noun phrases, following the description of the invention in a patent or patent application, and define, in technical terms, the extent of the protection conferred by a patent or by a patent application. ... An invention an object, patent, process, or technique which displays an element of novelty. ...

The goal of the doctrine of equivalents is to provide patent owners with fair protection for their patents. As stated by the British House of Lords, "Copying an invention by taking its 'pith and marrow' without textual infringement of the patent is an old and familiar abuse which the law has never been powerless to prevent." (Per James, L.J., in Clark v. Adie (1873) L.R. 10 Ch. 667). However, the doctrine has been criticized as unduly vague, to the extent that it injects uncertainty and unpredictability to a patent system. This article is about the British House of Lords. ...

Standards for determining equivalents

France

In France, the doctrine of equivalents can be invoked if the accused device contains means having the same function in order to obtain the same result as the claimed invention.

Germany

In Germany, a device is considered to be equivalent if there is identity between the device and the claimed invention with respect to the problem and the effect, but not necessarily the "solution principle" (the manner in which the device operates).

Japan

Japan's doctrine of equivalents was first formalized in 1998, when Japan's Supreme Court held that equivalents are determined by considering (1) whether the difference relates to an important claim element, (2) the possibility for substitution without causing a failure to attain an invention's object and a change in the manner of attaining it, (3) obviousness of the substitution, (4) whether the accused item is an anticipated or obvious modification of state of the art, and (5) whether estoppel exists. 1998 (MCMXCVIII) was a common year starting on Thursday of the Gregorian calendar, and was designated the International Year of the Ocean. ... The Supreme Court of Japan (最高裁判所, Saikō-Saibansho; shortly called 最高裁, Saikō-Sai), located in Chiyoda, Tokyo is the highest court in Japan. ...

United Kingdom

The factual accuracy of this article or section is disputed. Please see the relevant discussion on the talk page.

In the United Kingdom, the doctrine of equivalents is defined as follows: an alteration of a claimed invention does not infringe the claim unless: Image File history File links Circle-question-red. ...

1. it would have no material effect on the way the invention works,
2. the lack of material effect would have been obvious to one skilled in the art at the date of publication, and
3. it would be apparent to one skilled in the art that the patentee could not have intended the claim language to exclude such a known, minor variant having no material effect.

United States

In the United States, there are two tests for determining whether an accused device or process is deemed to be equivalent. Under the first test (Graver Tank & Manufacturing Co. v. Linde Air Products Co., (1950)), called the "triple identity" test, something is deemed equivalent if:

1. It performs substantially the same function
2. in substantially the same way
3. to yield substantially the same result.

Under the second test (Warner-Jenkinson Co. v. Hilton Davis Chem. Co. (1997)) something is deemed equivalent if there is only an "insubstantial change" between each of the elements of the accused device or process and each of the elements of the patent claim. One limitation that has been placed on this doctrine is prosecution history estoppel, which prevents a claim from being made for infringement where the difference is something that the patentee had abandoned through an amendment to the patent. It is generally considered the case that the second test builds on the first test in a doctrine of equivalents analysis. Prosecution history estoppel, also known as file-wrapper estoppel, is a term used in United States patent law to indicate that a person who has filed a patent application, and then makes amendments to the application to accommodate the patent law, has no cause of action for infringement to the...

A doctrine of equivalents analysis must be applied to individual claim limitations, not to the invention as a whole.^[1]

Harmonization attempts

Attempt were made in the past to harmonize the doctrine of equivalents.

For instance, Article 21(2) of 1991 WIPO's "Basic Proposal” for a Treaty Supplementing the Paris Convention states: 1991 (MCMXCI) was a common year starting on Tuesday of the Gregorian calendar. ... Headquarters in Geneva The World Intellectual Property Organization (WIPO) is one of the specialized agencies of the United Nations. ... The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, is an important and one of the first intellectual property treaties. ...

"(a) (...) a claim shall be considered to cover not only all the elements as expressed in the claim but also equivalents.

(b) An element (“the equivalent element”) shall generally be considered as being equivalent to an element as expressed in a claim if, at the time of any alleged infringement, either of the following conditions is fulfilled in regard to the invention as claimed:

(i) the equivalent element performs substantially the same function in substantially the same way and produces substantially the same result as the element as expressed in the claim, or

(ii) it is obvious to a person skilled in the art that the same result as that achieved by means of the element as expressed in the claim can be achieved by means of the equivalent element."

On a strict European level, explicit introduction in codified law is planned as it can be seen in the new version of the European Patent Convention, the "EPC 2000" (pdf). The new protocol on the interpretation of Article 69 EPC states, in its new Article 2: The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention (EPC), is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. ...

"For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is an equivalent to an element specified in the claims."

Landmark decisions

• United States
  • Graver Tank & Manufacturing Co. v. Linde Air Products Co., (1950)
  • Warner-Jenkinson Co. v. Hilton Davis Chem. Co. (1997)
  • Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., both Federal Circuit and Supreme Court decisions
  • Honeywell International v Hamilton Sundstrand Corp.(doc)
• United Kingdom
  • Catnic Components Ltd. v. Hill & Smith Ltd. (1982)
  • KirinAmgen v. TKT (October 21, 2004, decision "UKHL 46", regarding European patent EP 148 605)
• Germany
  • Batteriekastenschnur decision
  • Formstein decision

Holding --- Court membership Case opinions Laws applied --- Graver Tank & Manufacturing Co. ... Holding Court membership Chief Justice: William Rehnquist Associate Justices: John Paul Stevens, Sandra Day OConnor, Antonin Scalia, Anthony Kennedy, David Souter, Clarence Thomas, Ruth Bader Ginsburg, Stephen Breyer Case opinions Majority by: Thomas Joined by: unanimous Concurrence by: Ginsburg Joined by: Kennedy Warner-Jenkinson Company, Inc. ... Holding --- Court membership Case opinions Laws applied --- Festo Corp. ... The United States Court of Appeals for the Federal Circuit, or simply the Federal Circuit, was founded in 1982 to combine similar federal cases to a specialized appellate court. ... The Supreme Court of the United States is the highest judicial body in the United States and is the only part of the judicial branch of the United States federal government explicitly specified in the United States Constitution. ... Catnic Components Ltd. ... October 21 is the 294th day of the year (295th in leap years) in the Gregorian Calendar, with 71 days remaining. ... 2004 (MMIV) was a leap year starting on Thursday of the Gregorian calendar. ...

References

1. ^ Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997)

Sources

• Meurer, Michael J. and Nard, Craig Allen, "Invention, Refinement and Patent Claim Scope: A New Perspective on the Doctrine of Equivalents" (April 20, 2004). Boston Univ. School of Law Working Paper No. 04-03; Case Legal Studies Research Paper No. 04-5. [1]

For the unrelated Jesuit university in Chestnut Hill, see Boston College. ...

See also

• Claim
• Prosecution history estoppel