navigating the patent maze

In the United States, a very long running interference battle over who first invented using Agrobacterium to transform plants has recently been decided. News of this critically important outcome comes only from the declared winner “Monsanto” and so the details of the claims in question are sketchy. What is clear though is that the patent that will soon issue is going to have a patent term of 17 years counted from the date of issuance.

For more information on the patents and science surrounding this technology, an overview may be downloaded. (Download as PDF)

A court may use the Doctrine of Equivalents (DOE) to find infringement when no literal infringement of the claims exists. The policy behind the DOE is to balance the rights of the patentee with a fair degree of certainty for third parties. The DOE weighs in by basically disallowing an infringer who makes a trivial change in the invention in order to escape infringement. What constitutes a trivial change depends heavily on the facts.

In a hypothetical example, it works like this:
- Claim 1: An isolated protein having the amino acid sequence presented in Figure 1.
- Alleged infringing product: An isolated protein that has the sequence of Figure 1, except for a single amino acid change.
- Literal infringement?: NO, because the claim requires the precise DNA sequence as shown in Figure 1.
- DOE?: MAYBE. A major factor bearing on the decision is whether the protein still functions the same way.

Some form of DOE exists in many countries, e.g., Japan and the United States, although the DOE has recently been highly reined-in in the United States. Now, the House of Lords in England has considered DOE in a case called Kirin Amgen and concluded that the DOE is not consistent with the European Patent Convention and has dealt the doctrine a death knell in England.