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Author
Ludmila Lisovskaya

Patent Specialist / Chemical Specialist

31 July 2020

What does the concept of “equivalent feature” mean when establishing a fact of patent infringement?

When establishing a fact of patent infringement, it is important to assess the volume of exclusive rights granted to the patent holder. The scope of exclusive rights for third parties determines the independent claims. In particular, the patent formula should sufficiently inform the potential infringer about where the limit of rights of the patent holder passes, i.e. each person must be aware of the existence of a patent and understand the scope of protection provided by that patent.

Thus, the task of both the patent offices and the judiciary is to find a compromise when both the rights of the inventor and the rights of third parties would be protected properly. One of the tools to find the “golden mean” is the doctrine of equivalents. The doctrine of equivalents allows you to maintain a balance between providing the patent holder with the opportunity to fully enjoy all the privileges granted to him by the patent, and ensuring that the claims give a clear idea of ​​the scope of the claims of the patent.

According to paragraph 3 of Article 1358 of the Civil Code of the Russian Federation, an invention is recognized as used in a product or method if the product contains, and each inventive feature is used in the method, given in the independent clause of the claims contained in the patent, or a sign equivalent to it and which has become known as such in the field of invention before the priority date.

Let us discuss the concept of “equivalent feature” and consider the main provisions of the “Theory of equivalents” in establishing the fact of patent infringement.

Based on the basic provisions of the methodology for assessing the conformity of a technical solution with the “inventive step” patentability condition enshrined in the relevant administrative regulation, it can be concluded that the replacement of a feature should be considered equivalent if: the replacement feature is known from the prior art on the priority date of the patent protected invention; the replacement attribute is known in connection with the implementation of the same function as the function of the replaced attribute (so that the replacement attribute is known in the same quality as the replaced one); the prior art also shows the effect of the replacement trait on the result provided by it.

Conversely, a replacement of a feature cannot be considered equivalent due to the creation of a new patentable solution in two situations: when the replacement feature is new, unknown from the prior art; when this attribute is known, and is known in the same quality as the replaced attribute, but ensures the achievement of a different result, and the effect of the replacement attribute on this new result is not known from the prior art. ”

The meaning of the concept of “equivalent feature” is interpreted by the Instruction on State Scientific and Technical Expertise of Inventions, published by the USSR State Committee for Inventions and Discoveries:

Equivalent signs are called signs that coincide in the function performed and the result achieved.When determining the equivalence of features, their interchangeability is taken into account, i.e. features that perform the same function may differ in the form of execution (in design, technology or material).The equivalence of the characteristics is also determined by the fact that the use of the analogue attribute in the claimed object does not give the latter additional useful qualities or significant advantages over the analogue.The theory of equivalents is a legal doctrine that was developed in the United States as far back as 1850–1860 in order to prevent an unscrupulous copycat from changing small or insignificant details of a patented invention while maintaining an essential identity, to avoid liability for patent infringement.In the USA, decisions are considered equivalent if they are characterized by the identity of the function performed, the ways to achieve the result, and the result itself. The equivalence triad is as follows: function – path – result.Thus, the classical doctrine of equivalents states: two means are equivalent if, despite different methods of implementation, they perform the same function aimed at obtaining the same result. Both tools have the same function if they are based on the same fundamental idea, in other words, they use the same principle in the same way. The result provided by any of these means should be of the same type and quality. A tool is not equivalent if it is used in a different way, even if a result of the same type is created, but has a different quality or degree of effectiveness. This classic doctrine is similar to the American threefold doctrine: the similarity of function, method (path) and result. ”However, most systems have some degree of uncertainty, which allows them to develop. In addition, universal law states that there is a plurality of development paths, equivalent or alternative, but plurality.Therefore, since the concept of “equivalent feature” is quite subjective, there will always be a variability in the interpretation of each case of violation of exclusive rights.

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