Supreme Court Gives Boost to Patent Holders

Supreme Court Gives Boost to Patent Holders

Patent law contains a doctrine known as the "doctrine of equivalents" which has historically helped patent holders protect their patents from persons who produce products "tweaked" to minute degrees simply to avoid technically infringing on the patent holder’s patent. For example, assume that the claims of a patented product call for a metal pole 1 inch in diameter. A competitor produces the same product using a 1⅛" metal pole. The competitor’s product does not literally infringe on the patent claims because the patent claims specify a 1", not a 1⅛", metal pole. Nonetheless, under the doctrine of equivalents, the product with the 1⅛" pole may be found to infringe on the patent.

The entire doctrine of equivalents was upset by the U.S. Court of Appeals for the Federal Circuit. Consider this situation: You file a patent application with the United States Patent and Trademark Office ("USPTO"). The USPTO responds objecting that your invention may be patentable but that one of its features is claimed in a previous patent. You then amend your patent application tweaking it as to overcome the objection raised by the USPTO. The USPTO then issues a patent to you. According to the Court of Appeals, because you amended your patent application to overcome the USPTO’s objection, you are not entitled to the benefit of the doctrine of equivalents with respect to any of your patented invention’s features, not just the feature that you changed when you amended your patent application.

If allowed to stand, the Court of Appeals decision would have eliminated the ability of patent holders to use the doctrine of equivalents to claim that someone was infringing on their patents. Cognizant of this fact, the U.S. Supreme Court overturned the Court of Appeals’ decision. Inventors and patent holders should be aware, however, that the doctrine of equivalents is dynamic, and continues to be subject to change.

Lesson. Work closely with your patent attorney before filing your patent application. Search for patents that might disclose what you consider to be your invention. As well as you are able, submit patent claims that will not require amendment.