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

48 Pages Posted: 28 Jan 2013

See all articles by Shamnad Basheer

Shamnad Basheer

Nirma University - Institute of Law

Raj Dave

Pillsbury Winthrop Shaw Pittman LLP

Martin J. Adelman

George Washington University - Law School

Nicholas Pumfrey

High Court of England and Wales - Chancery Division

Peter Meir-Beck

German Supreme Court

Yukio Nagasawa

Supreme Court of Japan

Maximilian Rospatt

Rospatt Osten Pross

Martin Sulsky

The Marbury Law Group

Multiple version iconThere are 2 versions of this paper

Date Written: 2009

Abstract

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.

Keywords: patent, doctrine of equivalents, infringement, international

JEL Classification: O34, K10, K33

Suggested Citation

Basheer, Shamnad and Dave, Raj and Adelman, Martin J. and Pumfrey, Nicholas and Meir-Beck, Peter and Nagasawa, Yukio and Rospatt, Maximilian and Sulsky, Martin, The Doctrine of Equivalents in Various Patent Regimes: Does Anybody Have It Right? (2009). Yale Journal of Law & Technology, Vol. 11, p. 261, 2009. Available at SSRN: https://ssrn.com/abstract=2203461

Shamnad Basheer (Contact Author)

Nirma University - Institute of Law ( email )

Sarkhej-Gandhinagar Highway
Gota
Ahmedabad, Gujarat 382 481
India

Raj Dave

Pillsbury Winthrop Shaw Pittman LLP ( email )

One Battery Park Plaza
New York, NY 10004-1490
United States

Martin J. Adelman

George Washington University - Law School ( email )

2000 H. St. NW
Washington, DC 20052
United States

Nicholas Pumfrey

High Court of England and Wales - Chancery Division ( email )

United Kingdom

Peter Meir-Beck

German Supreme Court ( email )

Karlsruhe
Germany

Yukio Nagasawa

Supreme Court of Japan ( email )

Japan

Maximilian Rospatt

Rospatt Osten Pross ( email )

P.O.B. 11 09 35
Düsseldorf, 40509
Germany

Martin Sulsky

The Marbury Law Group ( email )

11800 Sunrise Valley Drive, 15th Floor
Reston, VA 20191
United States

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