A Case for Internationally Adopting a Modified US-Style Approach to Claim Construction

Ronald S. Fernando, Osgoode Hall Law School

Abstract

Despite the rhetoric about the harmonization of intellectual property rights under TRIPS, it remains challenging to obtain and enforce respective patent rights for the same invention in a number of different countries. One challenge stems from the fact that claim construction principles have not been internationally standardized. Consequently, the realizable scope of protection may vary from one country to the next because how the scope of a claim is determined often varies from one country to the next. The variability creates uncertainty that stifles the type of socially beneficial economic activity patent systems are trying to encourage.

This paper provides a case for internationally adopting a modified US-style approach to claim construction. It is first argued that the US Doctrine of Equivalents (DOE) should be added to the claim construction process in the United States. In strict legal terms the DOE applies only after literal infringement of construed claims cannot be found. However, beyond the courtroom the DOE is already co-mingled with claim construction. For example, when evaluating freedom-to-operate, competitors may yield more to a patentee than the literal scope of the claims because of the applicability of the DOE. In other words, it is artificial to ignore the impact of the DOE during the claim construction process because competitors use the DOE to determine the boundaries of the exclusive territory within which they may be trespassers.

It is then argued that the modified US-style approach proposed herein would provide more predictable results than the approaches taken in other jurisdictions. To that end, this paper provides a comparative analysis of the approaches to claim construction in other jurisdictions. It is worth noting here that approaches in other jurisdictions, in contrast to the US, typically include mechanisms that extend the scope of a patent right beyond a literal interpretation of the claims.