From my old diary entry 특허법 overview snapshot. 나무말고 숲이 보이는데 별 희귀한 나무만 모아놓은 숲이다. Only when an inventor gets his patent from the PTO, he can sue the infringers. IP law is similar to medical malpractice where lawyers rely on medical expert testimony, cause subject matter is all technical and scientific. Decisions are heavily fact-intensive. To punish accused infringers, we compare the patented product and the infringing one but you cannot always understand the patent claim itself. Your clients are not murders as in criminal courts or divorcees as in family courts but the most brilliant scientists whose knowledge is so great as to invent something novel, useful and nonobvious. They are also business savvy and want to exclude competitors from copying their patented inventions. So patent lawyers must be super smart cause their clients are super smart scientists. They use technical terms and what if the patent lawyer does not understand their invention, let alone go to court to punish their competitors? Patent lawyer`s job is a combination of 1) the patent agents` prosecution or patent reexamination, 2) litigation and 3) science or pharmacy knowledge. The textbook teaches 101, 102, 103 and 112 (how the PTO examiners would reject and how to overcome these hurdles in amendments) then, you obtain the patent only to initiate patent infringement lawsuit by bombarding each other with the whole thing 101, 102, 103 and 112 all together like interconnected/intertwined boomerangs under the doctrine of equivalents (DOE). In other words, scientists at the PTO raised rejection or unpatentability and when the patent agent amends it, the PTO grudgingly issued acceptance but they could foresee future possibility/likelihood of patent infringement. The DOE resurrects all prosecution history reasons in the form of 101 novelty or legal nontechnical argument about statutory patentable subject matter, 102 utility, 103 nonobvious and nontechnical John Deere secondary multi-factor test and 112 enablement requirements. These were what the PTO examiner raised as reasons to reject and to request amendment. But these endeavor to distinguish the invention from pertinent prior art later come back as a range of equivalents or possible infringers` slightly different copycats. Nontechnical judges favor the doctrine of equivalents cause even without perfect match between the invention and the infringing knockoff, even without perfect understanding of scientific internal knowledge, the DOE allows them to round-up and group seemingly similar inventions as the equivalents and thereby finding infringement without the perfect proof. The DOE is not the literal infringement. But all the revisions and amendments during the patent prosecution limit the inventor`s ability to invoke the DOE later in the lawsuit. It is inconsistent the inventor narrows down the scope of the claim in his desperate attempt to win the patent by obeying the PTO`s direction to distinguish his invention from prior art and then tries to broaden the scope of his patent to throw a wider fish net to render his competitors` different products as equivalents and thus infringing? When subject matter is beyond and above me, I try to focus on the legal dispute and try to draw any principles.
Posted on: Tue, 23 Jul 2013 18:07:38 +0000
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