Sunday, May 9, 2010

Prosecution History Estoppel and Prosecution Disclaimer

Many practitioners use the term "prosecution history estoppel" to refer to any limits on claim scope that arise from actions taken during prosecution. It turns out that, strictly speaking, the doctrine is more narrow than this.

Prosecution history estoppel is limited to the doctrine of equivalents context — actions taken during prosecution estop the patentee from invoking infringement under doctrine of equivalents. The related doctrine of prosecution disclaimer affects claim construction — the patentee disclaims scope through actions taken during prosecution.

If you want to know more, read this article at IP Today. And if you can't get to that article because it's "subscriber only", here is a CLE paper discussing disclaimer. The CLE paper is much longer, but the discussion of disclaimer vs. estoppel is on the first page of the main article.

1 comment:

  1. I've heard of this distinction before, but it always appeared to be a distinction without a difference. Sadly, the IP Today article is for subscribers only.