Foreseeability as a Bar to the Doctrine of Equivalents

18 Pages Posted: 24 Jul 2003

See all articles by Jeremy T. Marr

Jeremy T. Marr

Boston College Law Review; Intellectual Property and Technology Forum at Boston College Law School; Boston College Law School

Date Written: May 20, 2003

Abstract

The common-law doctrine of equivalents extends a patent's protection to cover certain similar devices that do not literally infringe on the patent's claims. Broad application of this doctrine can, however, create uncertainty as to how substantial an improvement a competitor must make to avoid non-literal infringement. This uncertainty can chill innovation by exposing the would-be improver to potential liability for infringement under a claim of equivalency. The courts created another rule, prosecution history estoppel, to cabin the expansion of protection provided by the doctrine of equivalents. Prosecution history estoppel prevents a patentee from claiming the equivalents that it surrendered during the prosecution of its patent. Both the U.S. Court of Appeals for the Federal Circuit and the U.S. Supreme Court have grappled with articulating the factual situations in which a patent's specification and prosecution history precludes the added protection afforded by the doctrine of equivalents. Several opinions in these cases suggest that a patentee should not be able to invoke the doctrine of equivalents to obtain protection from equivalents that one skilled in the art would have reasonably foreseen before the patent issued. This paper examines a series of cases related to the applicability of foreseeability to the doctrine of equivalents. It then attempts to synthesize the current state of the law in the area, and analyzes arguments for and against adopting a foreseeability rule.

Keywords: Patent Law, Foreseeability, Doctrine of Equivalents, Prosecution History Estoppel, Intellectual Property

JEL Classification: D21, E22, K11, K13, K19, K39, K41, L43, O34

Suggested Citation

Marr, Jeremy T., Foreseeability as a Bar to the Doctrine of Equivalents (May 20, 2003). Available at SSRN: https://ssrn.com/abstract=410027 or http://dx.doi.org/10.2139/ssrn.410027

Jeremy T. Marr (Contact Author)

Boston College Law Review ( email )

885 Centre Street
Newton, MA 02459-1163
United States

Intellectual Property and Technology Forum at Boston College Law School

885 Centre Street
Newton, MA 02459-1163
United States

Boston College Law School

885 Centre Street
Newton, MA 02459-1163
United States

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