DR.

RAM MANOHAR LOHIYA NATIONAL LAW

UNIVERSITY, LUCKNOW

FINAL PROJECT SUBMISSION ON INTELLECTUAL PROPERTY RIGHTS

DOCTRINE OF EQUIVALENCE

SUBMITTED TO: SUBMITTED BY:

Ms. Priya Anuragini Abhishek Kumar Singh

Asst. Professor Dr. RMLNLU, Lucknow (Roll no 171)
 ACKNOWLEDGEMENT

This project venture has been made possible due to the generous co-operation of various
persons. Apart from the efforts taken by me, the success of this project depends largely on the
encouragement and guidance of many other people. I take this opportunity to express my
thanks to the people who have been instrumental in the successful completion of this project.
To list them all is not possible, even to pay them in words is beyond the domain of my lexicon.
I would like to express my sincere thanks and deep gratitude to Ms. Priya Anuragini without
whose thorough and insightful guidance, this project work would not have been a success. I
also express my sincere thanks to the library staff of RMLNLU and my friends for their co-
operation in my endeavour.

Regards
Abhishek Kumar Singh
Sem VII
INTRODUCTION
The patent laws "promote the Progress of Science and useful Arts" by rewarding innovation
with a temporary monopoly. The monopoly is a property right; and like any property right, its
boundaries should be clear. A patent holder should know what he owns, and the public should
know what he does not. For this reason, the patent laws require inventors to describe their work
in "full, clear, concise, and exact terms," as part of the delicate balance the law attempts to
maintain between inventors, who rely on the promise of the law to bring the invention forth,
and the public, which should be encouraged to pursue innovations, creations, and new ideas
beyond the inventor's exclusive rights.
The doctrine of equivalents is arguably one of the most important aspects of patent law. The
protection a patent confers is meaningless if its scope is determined to be so narrow that trivial
changes to a device bring it out of the bounds of the patent. One of the greatest challenges
courts and legislatures therefore face in patent law is to create rules for determining patent
scope that maintain the protection a patent is meant to confer while still keeping the patent
monopoly within reasonable bounds. Despite the general unity in patent laws among developed
countries, the difficulty of this task has led to different results in different jurisdictions. Many
jurisdictions have chosen to determine patent scope under a doctrine of equivalents, while
others have maintained the position that adequate scope can be found within the meaning of a
patent's claim. Even jurisdictions which agree that a doctrine of equivalents should apply differ
significantly in its application. This Article provides an examination of three patent
jurisdictions the United States, the United Kingdom and India-and their separate answers to
the question of patent scope. This Article does not purport to decide which jurisdiction has the
right solution, but merely points out that different solutions can be and have been found for the
question of equivalents. Although a traditional case of patent infringement under the doctrine
of equivalents may find protection under all four jurisdictions, the laws of these countries start
to diverge on questions regarding after-arising technology, the essential elements of a patent
claim, and equivalents that clearly fall outside the language of a claim. One cannot answer the
question, "Does anybody have it right?" without first considering these issues.
A patent contains several parts—a specification, usually one or more drawings, and always one
or more claims. No matter how much a questioned machine, manufacture, composition of
matter or process may look like the specification and drawings of a patent, it is only the claims
of the patent which can be infringed. For that reason, if an issue of infringement arises, it
becomes necessary to examine the claims of the patent in question.
1. WHAT IS DOCTRINE OF EQUIVALENTS ?
The ‘Doctrine of Equivalents’ proposes that despite an absence of literal infringement of
express terms of a patent claim, the infringement can still be proven if an element of an accused
product or service and a claimed element of patented invention are found to be legally
equivalent. In other words, the doctrine expands the protection an inventor receives for his
invention (based on the literal wording of the claims in a patent application), as the doctrine
holds that a patentee can claim rights to inconsequential alterations to the thing patented, which
are not literally covered by the original claims, but which could be achieved with little effort.
It ‘prevents a person from practicing a fraud on a patent by substituting obvious equivalents
for elements in the claims in order to avoid their literal language.’

2. SCOPE OF DOCTRINE

3. THE TESTS OF EQUIVALENCE

To restrain the application of the doctrine, the courts have developed five legal tests:
(i) All elements rule,
(ii) Tri-partite test: Function, way, result,
(iii) Insubstantial differences test,
(iv) Obviousness test, and
(v) Known interchangeability test.

4. POSITION IN INDIA
It is submitted that we have a poorly analysed, sloganistic environment of patent case laws,
which are rather poorly and thoughtlessly analysed. There is no specific path, which the Courts
had laid. The Indian Court’s decisions are highly influenced by the English Patent
Jurisprudence.
Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries
Arnold v Brandbury.
Parkinson v Simon
Lallubhai Chakubhai v Chimanlal & Chunilal & Co
Raj Parkesh v Mangat Ram Chowdhary
Ravi Kamal Bali vs Kala Tech And Ors
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