The Doctrine of Equivalents and the Third Prong of the German Test: A Comparative Law Perspective

GRUR (Gewerblicher Rechtsschutz und Urheberrecht), Vol. 123, No. 2, Pp. 369-73 (Feb. 2021)

Posted: 19 Mar 2021

See all articles by Toshiko Takenaka

Toshiko Takenaka

University of Washington - School of Law

Date Written: February 1, 2021

Abstract

This article examines the recent trend of applying and limiting the doctrine of equivalents (DOE) in U.S. and German courts. The German Federal Court of Justice (BGH) established a three-prong test for applying the DOE in Schneidermesser. In Pemetrexd, BGH’s application of the third prong – guidance by the claim – moved German DOE more in line with that of U.S. in preventing patentees from asserting DOE on disclosed but unclaimed variant means. Although prosecution history estoppel (PHE) remains a major difference between German and U.S. DOE, the Federal Circuit’s new approach to applying PHE flexibility results in a merger with the German approach in Formstein — DOE is rejected when the accused embodiment lacks novelty or an inventive step. As a result, both BGH and the Federal Circuit reached the same conclusion in the German and U.S. Pemetrexed cases: Infringement under DOE.

Keywords: patents, comparative law, doctrine of equivalents

Suggested Citation

Takenaka, Toshiko, The Doctrine of Equivalents and the Third Prong of the German Test: A Comparative Law Perspective (February 1, 2021). GRUR (Gewerblicher Rechtsschutz und Urheberrecht), Vol. 123, No. 2, Pp. 369-73 (Feb. 2021), Available at SSRN: https://ssrn.com/abstract=3806130

Toshiko Takenaka (Contact Author)

University of Washington - School of Law ( email )

William H. Gates Hall
Box 353020
Seattle, WA 98105-3020
United States

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