Die Entwicklung der Rechtsprechung zur patentrechtlichen Äquivalenzlehre in Deutschland und Großbritannien

Is a uniform European doctrine of equivalence within reach in light of the recent UK Supreme Court decision in Actavis v. Eli Lilly? Taking a comparative approach, the thesis outlines the development of case law on the scope of patent protection in Germany and the United Kingdom by looking at the respective precedents and examines whether there is a common foundation for a uniform doctrine of equivalence in the two most important patent jurisdictions in Europe. It deals in particular with the two controversial and for practitioners very relevant problem areas of the "prosecution history estoppel" as well as the so-called selection decision and makes a proposal for a reform of the EPC.

Design Patent: A Unique Tool for Design Protection

Design patent is deemed as a superb competitive tool in the design industry. The author of this study delineates a co-opetition type of relationship of design patent with patent, trademark, and copyright to assist designers to construct a correct core concept of design patent quickly. The investigator proposed five key judgment factors based on infringement identification, and they are (1) literal infringement, (2) doctrine of equivalence, (3) points of novelty test, (4) prosecution history estoppel, and (5) prior art limitation. They can help designers clearly identify the legal right and scope of their design. Lastly, the author proposed three new competitive tools for a design patent, and they are (1) partial design patent, (2) computer-generated icons and graphic user interface, and (3) derivative design patent. Using these three new design patent tools will enable designers to effectively expand their design patent rights and maximize design benefits for their companies.

ESTOPPEL IN INTELLECTUAL PROPERTY LITIGATION

The article deals with licensee estoppel, file wrap estoppel and equitable estoppel in relation to the intellectual property disputes. Firstly, the paper considers negative impact of licensee estoppel on economic. Secondly, the paper analyzes the prosecution history estoppel which often goes hand-in-hand with doctrine of equivalents. Thirdly, the paper describes equitable estoppel as a solution to prevent rent-seeking behavior of owner.

Paying the Price for Admission

This chapter makes the case for joined-up thinking when approaching non-traditional signs in trade mark law. Trade mark registration has moved from up-front exclusions for certain categories of signs (no shapes, no colours) toward incremental acceptance. However the policy concerns generated by the grant of legal monopolies in such signs remain equally relevant today. The grant of an abstract color mark to one trader closes off a part of the color spectrum to others. Can we therefore allow such signs in to the system while successfully managing the tensions this generates? The approach advocated here is that we should correlate the mark as characterized at the time of registration—agreeably modest in its scope and ambitions—with the mark as deployed in an enforcement context, where it otherwise tends to be read more generously. The doctrine of prosecution history estoppel in patent law may have valuable lessons for trademark law.

The (Unnoticed) Demise of the Doctrine of Equivalents

We have conducted an empirical study of every reported doctrine ofequivalents decision in both the Federal Circuit and the district courtsduring three periods - one before the Federal Circuit's 2000 Festo opinion,one after that opinion but before the Supreme Court's 2002 opinion, and athird after the Supreme Court's opinion. Two broader findings stand out.First, the multiple changes in the doctrine of equivalents rules over thelast ten years have had surprisingly little effect on the actual outcome ofdoctrine of equivalents cases, and even less effect on the subset of casesdealing directly with prosecution history estoppel. Indeed, to the extentthere is any relationship it is an inverse one - patentees did better underless patent-friendly rules. The attention everyone has paid to Festo aschanging the value of patent rights therefore seems to have been largelywasted from a practical perspective.The second finding is even more significant: the reason the Festo changeshad so little effect seems to be that the doctrine of equivalents wasalready near death by the late 1990s. Even under the permissive doctrine ofequivalents rules in place before 2000, while everyone was focused on thedoctrine of equivalents, equivalents claims usually failed, most often onsummary judgment. That became even more true after 2000, and the SupremeCourt's 2002 decision didn't change the trend. In fact, district courts aremore likely to reject doctrine of equivalents claims today than everbefore.This left us with a bit of a puzzle: what killed the doctrine ofequivalents in the 1990s? We suspected the answer was the growth of claimconstruction Markman hearings after the Supreme Court's 1996 decision inthat case. Once courts were construing claims as a matter of law pre-trial,and finding themselves in a position to resolve virtually all infringementissues on summary judgment, they were naturally inclined to decide thedoctrine of equivalents issues too. And a court that has just rejected aliteral infringement argument - the only courts likely to spend much timethinking about equivalents issues pre-trial - is unlikely to undo the workof claim construction by sending the issue of infringement by equivalentsto the jury. To test this hypothesis, we constructed a fourth dataset,including cases decided in the 1993 to 1995 timeframe. That data bears outour hypothesis. The doctrine of equivalents was alive and well beforeMarkman, but has been in decline ever since.