Prosecution history estoppel

Last updated

Prosecution history estoppel, also known as file-wrapper estoppel , is a term used to indicate that a person who has filed a patent application, and then makes narrowing amendments to the application to accommodate the patent law, may be precluded from invoking the doctrine of equivalents to broaden the scope of their claims to cover subject matter ceded by the amendments. Although primarily a U.S. term, questions of whether, or the extent to which the prosecution history should be relevant for determining the extent of protection of a patent also arise outside the U.S. [1]

Contents

Canada

On December 13, 2018, new section 53.1 of the Patent Act makes prosecution history evidence admissible before the Court for the purposes of claim construction. [2]

Patents in Canada are subject to a purposive construction, which relies on reading both the claims and the specifications to determine the scope of a patent, and extrinsic evidence is not permitted. Therefore, the Canadian courts emphatically reject what they refer to as "file wrapper estoppel". [3] No distinction is drawn between cases involving allegations of literal infringement and those involving substantive infringement, which means that the negotiations that have taken place between the patentee and the Patent Office cannot be used in order to establish a particular equivalent. Similarly, a patentee is barred from using any previous negotiations with the Patent Office in order to determine the scope of the claims of the patent (i.e. the negotiations cannot be used by the patentee or against the patentee in determining the scope of the claims within the patent).

This is one of the significant differences that exist between Canadian and US patent jurisprudence, which leads some legal commentators to state that Canada is more friendly for rights holders in pursuing patent claims. [4]

Germany

The German Federal Court of Justice ruled in 2002 that "issues derived from prosecution history cannot be taken into account in the assessment of the scope of protection of a patent, even with regard to the requirement of legal certainty". [1] [5] More than a decade later, the Federal Court of Justice ruled [6] on 14 June 2016 that statements made during prosecution may indicate how the skilled person construes a patent. At the same time, the Federal Court of Justice set forth that such indications must not readily be relied on as the sole basis of claim construction.

Ireland

The Irish Supreme Court has ruled that "evidence from the file which reflects the views of the patentee as to the construction of the claims is inadmissible". [1] [7]

Netherlands

The Dutch Supreme Court has effectively come to the opposite conclusion to most other countries in Europe. [1] The Dutch Supreme Court has stated that where "a third party invokes the examination file in the course of confirming the interpretation defended by him of a patent, it cannot be seen that that requirement [the reasonable doubt threshold] would force any restriction on involving public data from the examination file with the interpretation of the patent". [8]

United Kingdom

The UK courts have ruled that use of the examination file in aiding construction of a patent should be discouraged [9] except where that file includes "objective information about and commentary on experiments". [1] [10]

United States

The defining case on prosecution estoppel in the United States is Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

Court of Appeals holding

In November 2000, the Court of Appeals for the Federal Circuit set a complete bar rule. This complete bar rule completely prohibited a patent owner from asserting the doctrine of equivalents for certain elements of her claim in instances where, during her patent prosecution she files:

  1. an amendment that narrows the scope of a claim for any reason related to the statutory requirements for a patent will give rise to a complete bar with respect to the amended claim element;
  2. a "voluntary" claim amendment that narrows the scope of the claim for a reason related to the statutory requirements for a patent will give rise to prosecution history estoppel as to the amended claim element; and
  3. an amendment and fails to explain the reasons for the amendment during prosecution of her patent.

Supreme Court reversal

The United States Supreme Court in their opinion Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. , 535 U. S. 722 (2002), citing the instruction in Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co. , finding that "courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community", overturned the complete bar issued by the Federal Circuit. It also acknowledged that while any narrowing amendment made for a reason related to patentability could give rise to prosecution history estoppel, inventors who amended their claims under the previous case law had no reason to believe that they were conceding all equivalents of amended elements when responding to a rejection. Had they known, the Court stated, they might have appealed the rejection.

With this policy in mind, the Court stated that it preferred a presumptive bar approach to the doctrine of equivalents. This presumptive bar approach holds that where claims are amended, "the inventor is deemed to concede that the patent does not extend as far as the original claim" and the patentee has the burden of showing that the amendment does not surrender the particular equivalent. To succeed, then, the patentee must establish that:

  1. the equivalent was unforeseeable at the time the claim was drafted;
  2. the amendment did not surrender the particular equivalent in question; or
  3. there was some reason why the patentee could not have recited the equivalent in the claim.

See also

Related Research Articles

<span class="mw-page-title-main">Patent infringement</span> Breach of the rights conferred by a patent

Patent infringement is an unauthorized act of - for example - making, using, offering for sale, selling, or importing for these purposes a patented product. Where the subject-matter of the patent is a process, infringement involves the act of using, offering for sale, selling or importing for these purposes at least the product obtained by the patented process. In other words, patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction.

In a patent or patent application, the claims define in technical terms the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent. This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid infringement liability. The claims are of paramount importance in both prosecution and litigation.

The doctrine of equivalents is a legal rule in many of the world's patent systems that allows a court to hold a party liable for patent infringement if the infringing device or process does not fall within the literal scope of a patent claim but is nevertheless equivalent to the claimed invention. In the United States, Judge Learned Hand has described its purpose as being "to temper unsparing logic and prevent an infringer from stealing the benefit of the invention."

The inventive step and non-obviousness reflect a general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. In other words, "[the] nonobviousness principle asks whether the invention is an adequate distance beyond or above the state of the art".

In United States patent law, patent misuse is a patent holder's use of a patent to restrain trade beyond enforcing the exclusive rights that a lawfully obtained patent provides. If a court finds that a patent holder committed patent misuse, the court may rule that the patent holder has lost the right to enforce the patent. Patent misuse that restrains economic competition substantially can also violate United States antitrust law.

Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950), was an important United States Supreme Court decision in the area of patent law, establishing the propriety of the doctrine of equivalents, and explaining how and when it was to be used.

Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), was a United States Supreme Court decision in the area of patent law, affirming the continued vitality of the doctrine of equivalents while making some important refinements to the doctrine.

Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), was a United States Supreme Court decision in the area of patent law that examined the relationship between the doctrine of equivalents and the doctrine of prosecution history estoppel.

Japanese patent law is based on the first-to-file principle and is mainly given force by the Patent Act of Japan. Article 2 defines an invention as "the highly advanced creation of technical ideas utilizing the law of nature".

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or their successor in rights in exchange to a public disclosure of the invention.

Under United States patent law a prosecution disclaimer is a statement made by a patent applicant during examination of a patent application which can limit the scope of protection provided by the resulting patent. It is one type of file-wrapper estoppel, the other being prosecution history estoppel.

Double patenting is the granting of two patents for a single invention, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention. However, the threshold for double patenting varies from jurisdiction to jurisdiction.

Oblon, McClelland, Maier & Neustadt, L.L.P. is an intellectual property law firm in Alexandria, Virginia. Founded in 1968 by Norman F. Oblon, Oblon is one of the largest law firms in the United States focusing exclusively on intellectual property law. The law firm performs trademark and patent prosecution, as well as litigation and Post-Grant Proceedings before the Patent Trial and Appeal Board (PTAB). The firm has been ranked first among law firms based on the number of utility patent applications filed per annum for 27 years.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter going beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant. In addition, Rule 80 EPC limits the types of amendments that can be done during opposition proceedings before the European Patent Office (EPO), and Rule 139 EPC relates to the correction of errors in documents filed with the EPO.

Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), is a case decided by the United States Supreme Court in which the Court reaffirmed the validity of the patent exhaustion doctrine. The decision made uncertain the continuing precedential value of a line of decisions in the Federal Circuit that had sought to limit Supreme Court exhaustion doctrine decisions to their facts and to require a so-called "rule of reason" analysis of all post-sale restrictions other than tie-ins and price fixes. In the course of restating the patent exhaustion doctrine, the Court held that it is triggered by, among other things, an authorized sale of a component when the only reasonable and intended use of the component is to engage the patent and the component substantially embodies the patented invention by embodying its essential features. The Court also overturned, in passing, that the exhaustion doctrine was limited to product claims and did not apply to method claims.

Patent law in modern mainland China began with the promulgation of the Patent Law of the People's Republic of China, in 1984. This law was modeled after patent systems of other civil law countries, particularly Germany and Japan.

The reverse doctrine of equivalents is a legal doctrine of United States patent law, according to which a device that appears to literally infringe a patent claim, by including elements or limitations that correspond to each element or limitation of the patent claim, nonetheless does not infringe the patent, because the accused device operates on a different principle. That is, "it performs the same or a similar function in a substantially different way." It has been said that "the purpose of the 'reverse' doctrine is to prevent unwarranted extension of the claims beyond a fair scope of the patentee's invention."

Blonder-Tongue Labs., Inc. v. University of Ill. Foundation, 402 U.S. 313 (1971), is a decision of the United States Supreme Court holding that a final judgment in an infringement suit against a first defendant that a patent is invalid bars the patentee from relitigating the same patent against other defendants. In so ruling, the Supreme Court overruled its 1936 decision in Triplett v. Lowell, which had required mutuality of estoppel to bar such preclusion, and held that the better view was to prevent relitigating if the plaintiff had had a full and fair opportunity to litigate the issue in question.

References

  1. 1 2 3 4 5 Richard Ebbink (June 2007). ""For the record" analysis". Patent World .
  2. ↑ Branch, Legislative Services (2018-12-13). "Consolidated federal laws of canada, Patent Act". laws-lois.justice.gc.ca. Retrieved 2019-04-21.
  3. ↑ Lovell Manufacturing Co. v. Beatty Bros. Ltd. (1962) 23 Fox Pat. C. 112 (Ex. Ct.), and P.L.G. Research Ltd. v. Jannock Steel Fabricating Co., (1991) 35 C.P.R. (3d) 346 (F.C.T.D.), noted in Free World Trust v. Électro Santé Inc. , 2000 SCC 66 at par. 64, [2000] 2 SCR 1024(15 December 2000)
  4. ↑ Andrew M. Shaughnessy; Andrew E. Bernstein (2005). "Patent Litigation: Choosing Between The United States and Canada" (PDF). The Metropolitan Corporate Counsel. 13 (2). Archived from the original (PDF) on 2012-08-16. Retrieved 2014-01-20.
  5. ↑ "BGH, Urteil vom 12. März 2002 - X ZR 43/01, [27] - Kunststoffrohrteil; OLG Düsseldorf" (in German).
  6. ↑ "BGH, Urteil vom 14. Juni 2016 - X ZR 29/15, - Permetrexed" (in German).
  7. ↑ Ranbaxy Laboratories Ltd & ors -v- Warner Lambert Company, [2005] IESC 81, [2006] 1 IR 193 (2 December 2005)
  8. ↑ "Dijkstra vs. Saier, No. C05/200HR, Appellant in cassation versus Saier Verpackungstechnik Gmbh & Co. Kg" (PDF). Supreme Court of the Netherlands. 22 December 2006.
  9. ↑ Kirin-Amgen Inc & Ors v Hoechst Marion Roussel Ltd & Ors [2004] UKHL 46 , [2005] 1 All ER 667(21 October 2004)
  10. ↑ Rohm and Haas Co & Anor v Collag Ltd & Anor [2001] EWCA Civ 1589 at para. 42, [2002] FSR 28(29 October 2001)
This page is based on this Wikipedia article
Text is available under the CC BY-SA 4.0 license; additional terms may apply.
Images, videos and audio are available under their respective licenses.