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December 27, 2020


The DOE gives patent applicants some comfort that their claims will be afforded a reasonable scope of protection beyond their literal scope if that is needed to adequately cover their invention. To the extent that this helps avoid messy disputes with the examiner about the outer boundaries of an invention and streamlines prosecution it is a good thing. This is especially true in the world we live in where a vast majority of patents are commercially unsuccessful and the actual scope of most claims is unimportant. Best to leave those difficult scope issues for the courts to resolve in the tiny minority of cases where it matters.

Agreed, James. The issue has been that the CAFC didn't believe in the DOE and made it difficult for inventors to rely on it. That has changed somewhat recently; we'll see if inventors feel the beneficial effects you rightly mention.

Thanks for the comment. Happy New Year

Yes, of course, James and Kevin. This is exactly the reason why (inspired by the USA) a DoE was written into the European Patent Convention from the outset, in 1973. It is all set out in the Protocol to Art 69, EPC.

But here, Applicant's claim recites "pemetrexed disodium". In the application as filed (if I understand the case correctly) there is no claim at all that is expressed at the next up level of generality, namely, "pemetrexed". How can such a thing happen????

Using the DoE, patentee recaptured a claim to territory not even announced in their patent application as filed.

I cant help thinking that there comes a point where the courts should decline to grace negligent drafting, that point being where the courts start giving encouragement to those who want to reduce respect for the value of patents as promoters of technical progress (by defining with precision the metes and bounds of the protected area). We all of us benefit when patents are adjudicated strictly, for then patents will tend to be drafted more thoughtfully and carefully.

" We all of us benefit when patents are adjudicated strictly,"

That is most definitely a loaded statement- as made clear for probably a decade now of other positions supported by MaxDrei that just do not stand up to scrutiny.

One man's "strictly" is another's Efficient Infringer's wet dream.

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