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

49 Pages Posted: 27 Feb 2013

See all articles by Nicholas Pumfrey

Nicholas Pumfrey

High Court of England and Wales - Chancery Division

Martin J. Adelman

George Washington University - Law School

Shamnad Basheer

Nirma University - Institute of Law

Raj Dave

Pillsbury Winthrop Shaw Pittman LLP

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

This article focuses on the scope of a patent’s protection and compares the rules in the United States, United Kingdom, Germany, and Japan. In the United States, the Supreme Court case Winans v. Denmead, which held that a patent is infringed by something that achieves the same result by using a different form, is the starting point for the doctrine of equivalents. In Graver Tank & Manufacturing Co. v. Linde Air Products Co., the Supreme Court later described the doctrine of equivalents as prohibiting “fraud on the patent.” In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., the Court adopted a test based on whether the patent writer would have foreseen an infringement. In contrast, English law approaches the issue from a “purposive construction” angle, which requires that a “variant or equivalent must fall within the language of a claim.” The article also discusses the European Patent Convention, with which the United Kingdom complies. Third, Germany approaches the doctrine of equivalents by asking four questions: 1) whether the second item has “the same technical effect,” 2) whether the creator of the second item knew that it would have “the same effect,” 3) whether the creator the second item knew about “the technical teaching of the patent claim,” and 4) whether the second item is “anticipated or made obvious by the state of the art.” Finally, in Japan, the doctrine of equivalents received judicial recognition in 1998 and focuses on the “essential part” of a creation; however, lower courts seem to rely on an “all elements rule,” which leads to inconsistent application of the doctrine of equivalents.

Keywords: patents, doctrine of equivalents, scope

JEL Classification: O31, O34, O57

Suggested Citation

Pumfrey, Nicholas and Adelman, Martin J. and Basheer, Shamnad and Dave, Raj 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). 11 YALE J. L. & TECH. 261 (2009); GWU Legal Studies Research Paper No. 2013-24; GWU Law School Public Law Research Paper No. 2013-24. Available at SSRN: https://ssrn.com/abstract=2224188

Nicholas Pumfrey

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

United Kingdom

Martin J. Adelman (Contact Author)

George Washington University - Law School ( email )

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

Shamnad Basheer

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

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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