On The Patent Equivalents Infringement

Equivalents infringement is an important type of patent infringement.This dissertation goes down the historical developments of theory of equivalents infringement in some major countries in the first place.Then through combining of cases practice,it discusses the necessities of the theory,and has a carding and comparative study on this subject of different countries.At last,it puts forward its own opinions about how to ameliorate patent equivalents infringement system of our country.The dissertation consists of six chapters as follows:Chapter 1 studies the historical developments in theory of equivalents infringement including US,UK,Germany and Japan.During the early period of US patent system when the patent claim wasn't established,the theory of equivalents infringement——doctrine of equivalents had germinated.In 1836,though the patent claim was introduced into US patent law,it hadn't the independent legal status.During this time,the doctrine of equivalents had been applied in cases and became the main theory which measured the patent protection scope. In 1870,the US patent law converted to the peripheral definition theory which leaded the doctrine of equivalents decling.As the peripheral definition theory was so rigid that it could not justly protect the benefits of patentees and realize the stimulation function of patent system,the US Supreme Court ultimately established the status ofthe doctrine of equivalents in the Graver(1950)and the Warner-Jenkinson(1997).In UK,the mainstream views do not accept the doctrine of equivalents.Before the Catnic(1980),the doctrine of pith and marrow was used to protect the equivalents of patent technology.In 1977,UK revised patent laws and established purposive construction approach in the Catnic(1980) in accord with the European Patent Convention.The purposive construction approach could break through literal meaning of the wording used in the claims and put those variants having no material effect upon the way Of the invention works to the scope of patent protection.On the contrary to UK,in order to duly rewarding the inventor,German courts had an application on the doctrine of equivalents long and widely by way of the general inventive idea theory.In according to the European Patent Convention,Germany revised the patent law in 1980 which provided that patent protection scope should be determined by the terms of the claims.The courts determined whether the equivalents would fall in the patent protection scope on the standard that the equivalents had been obvious to the average skilled person in the art.Because of imitating and learning foreign advanced technology,Japan had been adopting the inventor's recognition limitation theory.With the continuous improvement of technical level,in order to meet to the voice of industry and the development trend of international patent system,the Japanese Supreme Court ultimately confirmed the status of the doctrine of equivalents in the Ball Spline(1998).Chapter 2 concentrates on the necessities of equivalents infringement theory.As patent system protects information with non-material characteristics,the public can not determine the patent protection scope with traditional methods which determines the real rights protection scope.So in the historical development of patent system,the specification and claim were successively applied to determine patent protection scope.The specification first appeared in UK.However,the specification's contents were so complex and varied that it was difficult to determine the patent protection scope.In view of this,the patent claim emerged in practice.In 1836,patent claim was first provided in US patent law.Restricted by the objective conditions,an applicant might not embrace all variants of the invention in the claims.In order to prevent one from seeking to pirate an invention benefit through insubstantial changes, justly protect the benefits of the patentees and realize the stimulation function of patent system,the patent protection scope must embrace equivalents to the claims described.In this regard,all countries and regions have basically formed a consensus.Chapter 3 mainly deals with the comparing matter,linguistic framework and time in determination of equivalents.Because of not holding that each element contained in a patent claim is deemed material to defining the scope of the patented invention,the "as a whole" approach inevitably conflicts with the definitional and public-notice functions of the claim.So the US Supreme Court denied the "as a whole" approach in the Warner-Jenkinson(1997) and established the all elements rule Which has also been recognized by the majority of countries and regions.The linguistic frameworks in determination of equivalents varies from country to country,such as the function-way-result tripartite test(US),the insubstantial difference test(US),the obviousness test(German),which had their own advantages and disadvantages. The US Supreme Court pointed out in the Warner-Jenkinson(1997) that different linguistic frameworks may be more suitable to different cases,depending on their particular facts.The time in determination of equivalents directly decides the scope of equivalents.Now from the current practice of various countries,there mainly are two types,one is at the time of filing date,the other is at the time of infringement and the latter has become the mainstream standards.Chapter 4 mainly discusses the doctrine of prosecution history estoppel.The doctrine is an important method to prevent the equivalents scope from expanding unreasonably.It precludes a patent owner in an infringement suit from obtaining a construction of a claim that would in effect resurrect subject matter surrendered during the course of proceeding in the patent office.At present,the awareness of the doctrine still varies from country to country.The prosecution history estoppel is a doctrine engrained in US patent law,but it's nature and purpose are not clarity.In the Festo(2002),the US Supreme Court indicated that in patent examination and approval process a narrowing amendment made to satisfy any requirement of the patent law might give rise to an estoppel.Where no explanation was established,however,the court should presume that the patent application had a substantial reason related to patentability for including the limiting element added by amendment.In those circumstances,the prosecution history estoppel would bar the application of the doctrine of equivalents as to that element.A patentee's decision to narrow his claims through amendment might be presumed to be a general disclaimer of the territory between the original claim and the amended claim.There were some cases,however,where the amendment could not reasonably be viewed as surrendering a particular equivalent.In addition,the US Court of Appeals for the Federal Circuit establishes the dedication rule,namely when a patent drafter discloses but declines to claim subject matter,this action dedicates that unclaimed subject matter to the public.Application of the doctrine of equivalents to recapture subject matter deliberately left unclaimed would conflict with the primacy of the claims in defining the scope of the patentee's exclusive right.Another point of view also further advocates that the doctrine of equivalents does not capture subject matter that the patent drafter reasonably could have foreseen during the application process and not included in the claims. Chapter 5 mainly discusses the questions relevant to the defense of prior art.The defense of prior art is also an important method to prevent the equivalents scope from expanding unreasonably as same as the doctrine of prosecution history estoppel doctrine.Any invention for which a patent right may be granted must possess the characteristics of novelty, inventiveness and usefulness.Therefore no matter how a patent claim is interpreted or expanded outward through applying the doctrine of equivalents,the technical elements belonged to prior art should not be embraced in the scope of patent protection.The defense of prior art can be applied in either literal infringement litigations or equivalents infringement litigations.When applying the defense of prior art,the prior art used by the defendant must be a complete technical solution which is known as one prior art or the combination of one prior art and common senses.In the above-mentioned circumstances,the court can determine whether the defense of prior art should be established only by considering the relationship between the accused device and the prior art rather than the claim.In addition,there is no fixed sequence in time when applying the defense of prior art and infringement judgment.So the court can determine it on the facts of the case following the economic principles.Chapter 6 raises some specific proposals to improve patent equivalents infringement system of our country.Although patent system was set up late in our country,the doctrine of equivalents had been recognized since the patent law was put to implementation.In 2001,the doctrine of equivalents was provided in the relevant judicial interpretation which made a clear basis for practice.However the provisions are so simple that they are not conducive to uniform the standards of justice in determing equivalents infringement.So this dissertation raises some specific proposals to improve our country's patent equivalents infringement system including the all elements rule,the time of infringement standard,the foreseeability principle and so on.