Examining the Recent Resurgence of Doctrine of Equivalents: Weighing the Effects of the Latest DoE Decisions on Patent Prosecution and Litigation Strategies in the U.S., Europe and Asia

July 22, 2021 10:15am

Wanda French-Brown
Partner
Loeb & Loeb LLP

Sharon Walker, Ph.D.
Director Legal
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Guido Pontremoli

Guido Pontremoli, Ph.D.
Global IP Head
Corp. Intellectual Property-Patents

Chiesi Farmaceutici S.p.A (Parma, Italy)

John D. Livingstone
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Atlanta, GA)

Across global jurisdictions, the extent of protection afforded by a patent is defined by the claims as read literally – or, under the Doctrine of Equivalents.  In the U.S., the courts seem to recently be taking a more expansive view on the application of DoE in finding patent infringement.  Meanwhile, across Europe, each jurisdiction has its own infringement test, making it difficult to predict the outcomes of infringement proceedings based on DOE.  This session will consider the current status of the Doctrine of Equivalents in the U.S. and across Europe, as well as the latest DoE developments in Japan.

  • Understanding the practical implications of the latest DoE case law developments in the U.S.
  • Examining the impact of Eagle Pharmaceuticals v. Slayback Pharma (Fed. Cir. 2020) on the future use of the disclosure-dedication doctrine
  • How can you draft a claim so you can get the broadest interpretation of Doctrine of Equivalents in a subsequent litigation?
  • Analyzing biologics under the Doctrine of Equivalents: How is the DoE being applied for small molecules vs. biologics? 
  • Comparing and contrasting the latest DoE decisions in the UK, Netherlands, Germany, France and Japan
  • Developing best practices for drafting patents to ensure DoE claims are covered for UK courts