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Also, the matters contained in the following were written in accordance with the law, rules, and jurisprudence prevailing at the time of writing and posting, and do not include any future developments on the subject matter under discussion.
AT A GLANCE:
The Literal Infringement Test and the Doctrine of Equivalents are fundamental in the adjudication of patent infringement cases. The Literal Infringement Test offers a precise measure of infringement based on the exact language of patent claims, whereas the Doctrine of Equivalents provides a broader protection against insubstantial changes. Together, these tests balance the need for clear boundaries in patent protection with the need to prevent infringement by trivial modifications. Understanding both tests is crucial for navigating the complexities of patent law and ensuring fair protection for patent holders while fostering innovation.
Patent infringement is a complex and often contentious area of intellectual property law. At its core, it involves the unauthorized use, production, or sale of a patented invention, which can have significant legal and economic consequences.
The law defines patent infringement as the making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee constitutes patent infringement. (Sec. 76.1, IPC)
The case of Godines v. CA (G.R. No. 97343 September 13, 1993) (Godines) held that tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents.
Literal infringement test
Under the literal infringement test, courts consider the elements of the invention as expressed in the claim(s). If the allegedly-infringing product or process falls within the literal meaning of the claim(s), there is patent infringement. (Philipps Seafood Philippines Corp. v. Tuna Processors, Inc., G.R. No. 214148, February 06, 2023)
In Godines, the Court applied the literal infringement test in determining whether the petitioner, the proprietor of the floating power tiller, infringed the patent for a turtle power tiller covering a “farm implement but more particularly to a turtle hand tractor having a vacuumatic housing float on which the engine drive is held in place, the operating handle, the harrow housing with its operating handle and the paddy wheel protective covering.” The Court considered the trial court’s observation during the inspection of the devices, to wit:
“Samples of the defendant’s floating power tiller have been produced and inspected by the court and compared with that of the turtle power tiller of the plaintiff (see Exhibits H to H-28). In appearance and form, both the floating power tillers of the defendant and the turtle power tiller of the plaintiff are virtually the same. Defendant admitted to the Court that two (2) of the power tillers inspected on March 12, 1984, were manufactured and sold by him (see TSN. March 12, 1984, p. 7). The three power tillers were placed alongside with each other. At the center was the turtle power tiller of plaintiff, and on both sides thereof were the floating power tillers of defendant (Exhibits H to H-2). Witness Rodrigo took photographs of the same power tillers (front, side, top and back views for purposes of comparison (see Exhibits H-4 to H-28). Viewed from any perspective or angle, the power tiller of the defendant is identical and similar to that of the turtle power tiller of plaintiff in form, configuration, design[,] and appearance. The parts or components thereof are virtually the same. Both have the circularly-shaped vacuumatic housing float, a pair of paddy in front, a protective water covering, a transmission box housing the transmission gears, a handle which [sic] is V-shaped and inclined upwardly, attached to the side of the vacuumatic housing float and supported by the upstanding G.I. pipes and an engine base at the top midportion of the vacuumatic housing float to which the engine drive may be attached. In operation, the floating power tiller of the defendant operates also in similar manner as the turtle power tiller of plaintiff. This was admitted by the defendant himself in court that they are operating on the same principles.(Emphasis supplied, citations omitted)
After comparing the patent claim and the petitioner’s floating power tiller, the Court was convinced that the petitioner is liable for patent infringement thus:
It appears from the foregoing observation of the trial court that these claims of the patent and the features of the patented utility model were copied by petitioner. We are compelled to arrive at no other conclusion but that there was infringement.
Doctrine Equivalents Test
In the case of Smith Kline Beckman Corp. v. CA (G. R. No. 126627, August 14, 2003), the Court held that the doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and, although with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result.
The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the burden to show that all three components of such equivalency test are met.
In summary, the Literal Infringement Test and the Doctrine of Equivalents are fundamental in the adjudication of patent infringement cases. The Literal Infringement Test offers a precise measure of infringement based on the exact language of patent claims, whereas the Doctrine of Equivalents provides a broader protection against insubstantial changes. Together, these tests balance the need for clear boundaries in patent protection with the need to prevent infringement by trivial modifications. Understanding both tests is crucial for navigating the complexities of patent law and ensuring fair protection for patent holders while fostering innovation.
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Alburo Alburo and Associates Law Offices specializes in business law and labor law consulting. For inquiries regarding legal services, you may reach us at info@alburolaw.com, or dial us at (02)7745-4391/ 0917-5772207/ 09778050020.
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