To ensure your patent catches potential infringements in the future, you must plan carefully and pay close attention to patent drafting. How is the patent's scope defined? Does the level of protection differ across jurisdictions?
On June 16 2020, members of Gowling WLG's global IP team hosted a webinar to explore the scope of patent protection across jurisdictions and how to draft patents with an eye to the future. During the webinar, our leading panel members highlighted key issues in patent scope that arise from the Doctrine of Equivalents. They discussed how the doctrine applies across jurisdictions and offered tips on how to use the doctrine to your advantage. The webinar, the third installment of our "Lifecycle of a Smart Idea" series is now available on demand here.
Following on from the webinar, our speakers have compiled their "top tips" in relation to the Doctrine of Equivalents, from drafting to enforcement:
Jian: "Prevention is better than cure. Your potential reliance upon the Doctrine of Equivalents in patent litigation must be considered during the patent drafting stage. Specifically, to take advantage of the Doctrine in China, my three tips for patent drafting in the life science sector are:
- Avoid using close-ended claims at all costs, unless you absolutely have to do so. Always use opened-ended claims.
- Be very careful when using limitation language in claim 1. Unless you need it to differentiate the prior art, it is better avoid phrases like "at least", "not more than", "not less than", "equal to", "not equal to", etc. If you have method claims, it is better to avoid sequenced lists, such as "step 1", "step 2", etc.; "firstly", 'secondly", etc.
- Include as many embodiments as you can in the patent specification, describe the working principle and/or technical effects of each embodiment or each inventive point in as much detail as possible, to maximize the scope of future application of the Doctrine of Equivalents."
Sonia: "In terms of drafting and prosecution, my top tip for Canada is NOT to rely on the Doctrine of Equivalents! Claims should be drafted carefully to capture all forms of literal infringement. Although the Doctrine of Equivalents can be relied on later, to capture some compounds or devices that do not literally infringe, that should be a backup plan."
Ruben: "In Russia, application of the Doctrine of Equivalents in the life science sphere is quite unpredictable as there have not been many cases. In drafting patents for Russia, it is best to recite as much about the preferred embodiments as possible in the independent claims for the following reasons: only independent claims can be considered for enforcement, thereby the risks upon applying DoE would be decreased; it helps to avoid application of DoE and increase the chances for regular infringement"
Thomas: "My top tip from Germany when enforcing patents is: Give the Doctrine of Equivalents a try! The trend in German case law has become considerably more patentee-friendly again - also with respect to the application of the Doctrine of Equivalents.
While the lower courts previously took a strict approach to the third "Schneidmesser" question (the questions the German courts consider when assessing equivalents) in relation to parity, the Pemetrexed ruling has cleared the way for a more patentee-friendly approach again.
Thus, when filing an infringement action in Germany do not only include argumentation on literal infringement, but also on infringement under the Doctrine of Equivalents."
Paul: "When it comes to deploying patents against potential infringers in the UK, bear in mind that there may be merit in bringing infringement proceedings against potential infringers even where there is a clear difference between the alleged infringement and the strict wording of the claims. Get a good legal team and devise a strategy – perhaps focus on the jurisdictions where the Doctrine of Equivalents is more readily applied, like in the UK.
As the scope for infringement by equivalents in the UK was extended in the Pemetrexed case, don't forget to revisit potential infringements that you may have considered a few years ago, and discounted. It might be that those products you previously didn't think were infringing now are."
John: "To me, one of the big takeaway messages is that the Doctrine of Equivalents is a useful principle that can be used to catch infringers who attempt to circumvent your patent by making an immaterial change to avoid the language of the claim and, today, although the precise test varies, that principle is applied across all the jurisdictions we have discussed – the UK, Russia, Canada, Germany and China."
Learn more about our Lifecycle of a Smart Idea series and access all webinar recordings. The series offers a fresh look at the field of intellectual property by tracing the options and steps that occur over the lifetime of a "smart idea" – from the laboratory or the "eureka moment," to the full development and exploitation and beyond. Over the course of the series we will be exploring the full range of IP rights, all while giving you the tips and perspectives you need to maximise opportunity and minimise risk when taking your smart idea to the global market.