Effect of Cross-Border Prosecution History Estoppel in India

Abstract

In a situation where there is a possibility of application of Doctrine of equivalents, in such a situation, the defendant in a particular case can defend himself through the mechanism of Prosecution History Estoppel, on account of which the doctrine of equivalents should not be made applicable. So, during the prosecution of a patent, the patentee may start with a broad claim which may be objected by the controller or during the process of examination. In such a situation, in due course of the opposition raised by the authorities, the patentee may make certain amendments through which the patentee might actually end up in narrowing down the claim. So, to understand prosecution history estoppel, the consideration of the actions that have been initiated by the patentee during the prosecution of the patent becomes necessary. This research paper is going to deal primarily with the nature and extent of the Doctrine of Prosecution history estoppel and it also seeks to examine the impact of variations in the claim language of the corresponding foreign country on the patent litigation in India. Moreover, this paper also seeks to bring clarity in the mechanism of Patent infringement along the operation of Prosecution History estoppel.