Obviousness and the Doctrine of Equivalents in Patent Law: Striving for Objective Criteria Comment 43 Catholic University Law Review 1993-1994

43 Cath. U. L. Rev. 577 (1993-1994)
Obviousness and the Doctrine of Equivalents in Patent Law: Striving for Objective Criteria

handle is hein.journals/cathu43 and id is 589 raw text is: OBVIOUSNESS AND THE DOCTRINE OF
EQUIVALENTS IN PATENT LAW:
STRIVING FOR OBJECTIVE
CRITERIA
The United States Constitution grants Congress the power to promote
technological innovation by granting to inventors the exclusive right to
their discoveries in the form of patents.' Congress has delegated the duty
of granting patents to the Commissioner of the Patent and Trademark
Office.2 The exclusionary right a patent provides' is effected through a
civil action alleging infringement of the patent and seeking injunctive re-
lief, damages, or both.'
Patent law can be divided into two general procedural periods-the
first relating to the procedure of procuring a patent from the Patent and
Trademark Office, and the second relating to the enforcement of the in-
ventor's right to exclude others from exploiting the patented invention.5
In the first period, the invention is fully described in an application con-
taining a disclosure,6 followed by claims designed to outline precisely
1. Article I, Section 8, Clause 8 of the United States Constitution grants Congress the
power to promote the Progress of Science and useful Arts, by securing for limited Times
to... Inventors the exclusive Right to their... Discoveries. U.S. CONST. art. I, § 8, cl. 8.
2. 35 U.S.C. § 6(a) (1988) (The Commissioner... shall superintend or perform all
duties required by law respecting the granting and issuing of patents .... ).
3. Upon receiving the grant of a patent, the inventor has the right to exclude others
from making, using, or selling the invention throughout the United States for a 17-year
term. Id. § 154.
4. Id. §§ 281, 283-284. Injunctive relief is available to prevent infringement of the
exclusive right secured by the patent. Id. § 283. Monetary damages are authorized upon a
finding of infringement in order to provide at least reasonable royalty for use of the inven-
tion and damages in lost profits traceable to the infringement. Id. § 284; see also Panduit
Corp. v. Stablin Bros. Fibre Works Inc., 430 F.2d 221 (6th Cir. 1970) (setting forth the
criteria necessary to recover damages for profits that would have been made but for the
infringement), cert. denied, 401 U.S. 939 (1971). Section 284 also provides that the court
may increase the damages up to three times the amount found. 35 U.S.C. § 284. The most
common event triggering enhanced damages is willful infringement shown by the egregious
conduct of the infringer. See, e.g., Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed. Cir.
1992) (outlining factors to assist the courts in determining whether enhanced damages are
warranted).
5. 1 IRVING KAYTON, PATENT PRACICE 1-5 (4th ed. 1989).
6. The disclosure is required to contain a written description of the invention in terms
that enable one skilled in the art to which the invention pertains to make and use the
invention. 35 U.S.C. § 112. Complete disclosure of the invention so that it may be freely

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