Prosecution-history estoppel, also known as estoppel, refers to the legal principle that prohibits a person from arguing something in court that contradicts their previous statements, actions, or established truths. It serves to prevent the relitigation of issues and the making of unfair claims. In the context of patents, prosecution-history estoppel restricts a patent holder’s ability to invoke the doctrine of equivalents by excluding elements that were relinquished or abandoned during the patent prosecution process.
Prosecution-history estoppel is a legal principle that restricts a patent holder’s ability to assert infringement by excluding any elements that the holder relinquished or abandoned during the patent application procedure. For instance, suppose a company seeks a patent for a novel type of widget. While going through the application process, the company argues that their widget is distinct from existing ones due to a specific feature. Although the patent is granted, another company later develops a widget with a similar feature. The first company cannot allege infringement based on that feature because they gave it up during the patent application process. This example demonstrates how prosecution-history estoppel curtails a patent holder’s capacity to claim infringement based on elements they surrendered or abandoned during the patent application process.
Prosecution-history estoppel is a legal doctrine that limits the scope of a patent’s claims based on the arguments made by the patent applicant during the patent prosecution process.
Prosecution-history estoppel can limit the scope of patent claims by preventing the patent owner from asserting claims that are inconsistent with arguments made during the patent prosecution process.
The purpose of prosecution-history estoppel is to ensure that patent applicants are held to the arguments they make during the patent prosecution process and to prevent them from making inconsistent arguments later on.
Any argument made by the patent applicant during the patent prosecution process that narrows the scope of the patent claims can trigger prosecution-history estoppel.
In some cases, prosecution-history estoppel can be overcome if the patent owner can show that the argument made during the patent prosecution process was not a clear and unmistakable surrender of claim scope.
Prosecution-history estoppel can be used as a defence in patent infringement lawsuits to limit the scope of the patent claims being asserted by the patent owner.
Yes, prosecution-history estoppel applies to all types of patents, including utility patents, design patents, and plant patents.
Prosecution-history estoppel cannot be waived by the patent owner, but it can be waived by the patent examiner during the patent prosecution process.
Prosecution-history estoppel can be a factor in patent licensing agreements, as it can limit the scope of the patent claims being licensed.
Prosecution-history estoppel cannot be used to invalidate a patent, but it can be used to limit the scope of the patent claims being asserted by the patent owner.
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This glossary post was last updated: 16th April 2024.
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