균등침해 요건 중 과제해결원리 동일성판단방법
The Doctrine of Equivalents: How to apply the same solution principle test
김동준(충남대학교)
44호, 39~95쪽
초록
In order for infringement under the Doctrine of Equivalents (hereinafter ‘DOE’) to be found, five requirements must be met. The first requirement is that the claimed invention and the accused embodiment share the same principle underlying the solution to the problem (hereinafter ‘same solution principle test’). This test is similar to the non-essential feature test of Japan and roughly corresponds to the parity (or same value) test of Germany. They all ask whether the accused embodiment has equal value as compared to the solution provided by the claimed invention. This article, based on the comparative study and case analysis, clarifies how to apply the same solution principle test. First of all, since it is part of the DOE, the same solution principle test must be applied to individual elements of the claim, not to the claimed invention as a whole. That is, to prove infringement under the DOE, the claimed element and modified element, as viewed in the context of the overall invention, share the same solution principle. Both in Japan and in Germany, the corresponding test is applied to individual elements of the claim, not to the claimed invention as a whole. In addition, the first requirement does not mean that elements to be replaced with their equivalents should not exist in a claimed element which distinguishes between the claimed invention and the prior art. Rather, it should be determined whether the claimed element and modified element share the same solution principle. In this determination, the characteristic feature, which represents the solution principle, may be used. Furthermore, although prior arts not described in the specification may be used to figure out the solution principle, they must be used to construe the solution principle so narrowly as to negate the first requirement. The DOE aims at providing fair protection for the patentee balanced against certainty for thirds parties. When applied according to the suggestions made above, the same solution principle test would help the DOE achieve its aim.
Abstract
In order for infringement under the Doctrine of Equivalents (hereinafter ‘DOE’) to be found, five requirements must be met. The first requirement is that the claimed invention and the accused embodiment share the same principle underlying the solution to the problem (hereinafter ‘same solution principle test’). This test is similar to the non-essential feature test of Japan and roughly corresponds to the parity (or same value) test of Germany. They all ask whether the accused embodiment has equal value as compared to the solution provided by the claimed invention. This article, based on the comparative study and case analysis, clarifies how to apply the same solution principle test. First of all, since it is part of the DOE, the same solution principle test must be applied to individual elements of the claim, not to the claimed invention as a whole. That is, to prove infringement under the DOE, the claimed element and modified element, as viewed in the context of the overall invention, share the same solution principle. Both in Japan and in Germany, the corresponding test is applied to individual elements of the claim, not to the claimed invention as a whole. In addition, the first requirement does not mean that elements to be replaced with their equivalents should not exist in a claimed element which distinguishes between the claimed invention and the prior art. Rather, it should be determined whether the claimed element and modified element share the same solution principle. In this determination, the characteristic feature, which represents the solution principle, may be used. Furthermore, although prior arts not described in the specification may be used to figure out the solution principle, they must be used to construe the solution principle so narrowly as to negate the first requirement. The DOE aims at providing fair protection for the patentee balanced against certainty for thirds parties. When applied according to the suggestions made above, the same solution principle test would help the DOE achieve its aim.
- 발행기관:
- 한국지식재산학회
- 분류:
- 법학