Saturday, February 18, 2006

Presentation: An Outdated Standard for Using the Doctrine of Equivalents

Large corporations and innovators invest billions of dollars every year to protect their products and inventions. Each year these corporations believe that they can protect these products and inventions through obtaining patents. By obtaining these patents, powerful legal protection is given to the patent holder.

In patent prosecution practice, patent attorneys draft a set of claims to define the scope of rights given to a patent holder. Patent attorneys draft claims in a patent to garner the largest amount of rights. Broader claims, however, would most likely be covered by prior art and therefore the patent attorney would have to modify the claims in subsequent amendments. On the other hand, when an attorney drafts narrow claims, the patent is less likely to be infringed, which means that the patent holder’s patent is worth very little.

Patent infringement occurs in two ways. Literal infringement occurs when each and every element of a claim reads on the accused device. More relevant to this discussion is the doctrine of equivalents. The doctrine of equivalents extends the protection of the patentee’s rights beyond the literal boundaries of the claims which define the invention. The relevant test for using the doctrine of equivalents is whether the differences between the patentee’s invention and the accused infringing invention are insubstantial to the one of ordinary skill in the art.

During the past decade, however, the patent holder’s rights have been significantly diminished. Accordingly, a recent line of cases, known as the Festo decisions, has restricted the use of the doctrine of equivalents. In the Supreme Court decision of Festo Corp. v. Shoketsu Kinsoku Kogyo Kabushiki Co., the Court held that a presumption against the use of the doctrine of equivalents arises when prosecution history estoppel exists. Prosecution history delinieates concessions during the negotiation between the patent attorney and the patent examiner. Although the presumption is rebuttable, the Federal Circuit has further limited the use of the doctrine of equivalents in subsequent cases.

My paper will discuss whether the Festo standard is still a workable standard for using the doctrine of equivalents. One theory that I have developed is that the Festo standard should still be used because it makes sense that the patent applicant should not receive the doctrine of equivalents for something that he could not have claimed during the prosecution phase of the patent. On the other hand, the standard in which the Federal Circuits have developed, along with the Supreme Court, has restricted too much to the patent holder. The patent attorney would be unwilling to amend the patent application, which in economic terms would be less cost-efficient too society.

My proposed standard includes removing the Festo standard as it is used now. The standard I propose includes giving the patent holder the maximum amount of rights including the doctrine of equivalents. The maximum amount of rights should extend only to the point where prior art will not be infringed. Thus, if a patent attorney makes amendments in order to avoid infringement of another patent, then the doctrine of equivalents will not apply to that specific aspect.

I know my topic is very complex and diluted, so I will give more background information in my discussion. I would appreciate any type of comments or suggestions as to my proposed standard on Thursday. Thank You

- This is for Aaron's presentation.


Blogger duffee said...

The Festo standard invokes prosecution history estoppel when the alleged equivalent was foreseeable at the time of the amendment but the patentee failed to draft his amended claim in a way that would encompass the foreseeable equivalent. Would you retain this rule so that prosecution history estoppel still applies if the equivalent was foreseeable yet the patentee still failed to draft his claims accordingly? It seems to me that it is fair to both the patentee and the public to expect that applicants will claim foreseeable equivalents at the time of the amendment and it would prevent patent holders from expanding their claims through the doctrine of equivalents when they could have specifically claimed the equivalent at the time of the amendment.

1:19 PM  
Blogger jeonghowi said...

This comment has been removed by a blog administrator.

1:28 PM  
Blogger jeonghowi said...

I would like to add some comments for clarification on your statement that “if a patent attorney makes amendments in order to avoid infringement of another patent, then the doctrine of equivalents will not apply to that specific aspect.”

An application for a patent is normally amended during prosecution to avoid rejections for anticipation and/or obviousness over prior art, but not to avoid infringement of prior art—you mean patents, here. An invention that might be infringing prior patents can still be patented if it is novel, nonobvious, and useful. This is why we need cross-licensing.

1:29 PM  
Blogger DSomogy said...

My comment related to a possible policy justification - that patent thickets are a problem, and tweaking the doctrine of equivalents might touch on this.

1:34 PM  
Blogger Ashik Jahan said...

I wonder if you could, for purposes of your paper, compare and contrast the international standards for using the doctrine of equivalents. How the doctrine of estoppel and the doctrine of equivalents have been applied in say the EU, UK, or Japan, may give you some insights as to how they ought to be improved in the U.S.

Just a thought.

1:34 PM  
Blogger Dave said...

My questions:

1) How is this a different standard from Festo?

2) Should prosecution history not apply at all under this standard?

1:35 PM  
Blogger ed said...

Nice job, interesting topic, just putting my question from class up there since you asked.
Basically I was wondering the policy behind your standard on using the doctrine of equivalents. Basically I guess I generally view narrower patent scope as beneficial in getting rid of weaker patents, or at least leaving some room for innovation to invent around patents, so basically I would ask with the side effects of your proposal which might reduce the give and take of the patent process, is this the best route to your policy goal and could we achieve it in another manner?

1:37 PM  
Blogger limewash said...

My question was whether limiting the definition of "patentability" or using a different language in the Festo holding would achieve your goal, as opposed to scrapping the holding.

Also, the issue of retroactivity is interesting, where broadening the patents would create infringement by more contemporary patents as a result.

1:37 PM  
Blogger Christine said...

I was somewhat confused by your presentation and proposal. I have not taken any patent law - so maybe it is just me. But, I'm still not entirely clear on exactly what you are proposing - except that you want to offer broader protection for patent holders - I think. In which case I would have to agree with the comment made that this would like impede innovations because inventors would be afraid of infringing. The way I understood what you were saying was that patent holders should be able to narrow their claims and than expand them again - if this is the case how are other inventors supposed to have any notice of what is or is not infringement? Maybe I am still not understanding - but, those are my concerns.

1:55 PM  
Blogger joemama said...


I'm sorry I didn't have anything to contribute to the discussion. I can follow your argument, and I think I like your position--at least using your interpretation of the Supreme Court's application of DOE, which presently sounds insufficient. Good luck!

1:15 PM  
Blogger Milt Sutton said...

I was also impressed with your presentation. I know very little on this topic so I don't have any substantive questions but would like to also see your proposal and how it fits with other international standards. Good job...

9:58 AM  
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