A Rethink on the Expansive Scope of the Doctrine of Equivalents in U.S. Patent Law
20 Pages Posted: 31 May 2015
Date Written: May 30, 2015
The heart of a modern patent is its set of claims which occupy center-stage in patent infringement cases. In such cases, the judicially created doctrine of equivalents in patent law plays a crucial role. The claims give notice to both the examiner at the U.S. Patent and Trademark Office (USPTO) during prosecution, and the public at large, including potential competitors, after the patent has issued. The claims essentially describe what is not to be infringed during the term of the patent. The doctrine of equivalents is a rule of claim interpretation under which a product or process, although not a literal infringement, is an infringement if it performs substantially the same function in substantially the same way to obtain the same result as a patented product or process. However, it is constrained by the rules of prosecution history estoppel, and the reverse doctrine of equivalents. This leads to a complex predator-prey kind of game where determining the victor is a very messy process. In this paper we suggest some steps to make the process less messy and better managed. In particular, we suggest the creation of a Patent Validation Board, a statutory body comprising STEM (science, technology, engineering, and mathematics) experts, with the final authority to decide if the claims of a granted patent are valid in law so that the public may know the precise legal limits of patent protection (including those granted under the doctrine of equivalents) without recourse to judicial ruling.
Keywords: patent, patent claims, doctrine of equivalents, prosecution history estoppel, reverse doctrine of equivalents
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