How close are the inventions? | Issue is whether the claimed invention is unpatentable (before USPTO) or invalid (if asserted as basis for claimant’s rights in litigation) | Issue is whether the defendant is infringing on a valid patent |
Identical | Prior art and applied-for invention are identical in all elements: 102 anticipation
Example:
Result: Prior art is identical, so X bars Y’s patent under 102. Question: How will the USPTO learn about X’s sale of ABC? |
Defendant is making, using, selling, etc. something identical in all elements to claimed invention: 271(a) literal infringement
Example:
Result: B is making and selling the identical product, so B is literally infringing A’s patent under 271(a). Question: What if it later turns out that a third person, “Tommy,” publicly sold DEF before A filed for a patent? |
Close but not identical | Prior art and applied-for invention have minor differences that are obvious to PHOSITA in light of pertinent prior art: 103 obviousness
Example:
Result: Prior art is not identical, but X will bar Y’s patent under 103 if the change from ABC to ABD is obvious. Question: How will the USPTO learn about X’s sale of ABC? |
Defendant is making, using, selling, etc. something that is equivalent to claimed invention: 271(a) infringement through doctrine of equivalents (DOE)
Example:
Result: B is not making and selling the identical product. However, if DEG is equivalent to DEF, then B is infringing A’s patent under 271(a) pursuant to the Doctrine of Equivalents. Question: What if it later turns out that a third person, “Tommy,” publicly sold DEG before A filed for a patent?
|
Revised June 14, 2018