Journal Article

Claim construction and the extent of patent protection: A comparative analysis of the <i>Phillips en banc</i> Federal Circuit decision

Toshiko Takenaka

in Journal of Intellectual Property Law & Practice

Volume 1, issue 2, pages 119-130
Published in print January 2006 | ISSN: 1747-1532
Published online December 2005 | e-ISSN: 1747-1540 | DOI:
Claim construction and the extent of patent protection: A comparative analysis of the Phillips en banc Federal Circuit decision

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  • Arbitration
  • Intellectual Property Law


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Legal context. The United Kingdom's House of Loads in Kirin-Amgen and the United States Court of Appeals for the Federal Circuit in Phillips addressed similar issues with respect to the methodology of claim interpretation and the fundamental rules and policies for determining the extent of patent protection. This article will review Phillips and Kirin-Amgen from the comparative law perspective. It will compare the UK and US rules and patent policies with their German and Japanese counterparts, discussing the bases for these differences and examining them from the perspective of patent policies, specifically with respect to fair protection and legal certainty.

Key points. Despite the use of the same rule and methodology, legal commentators and patent professionals emphasize the differences in the extent of patent protection in different jurisdictions. Such differences result from the availability of the doctrine of equivalents. For jurisdictions such as the UK, the US and Japan, where courts seldom apply the doctrine of equivalents, the differences result from the way in which the courts conduct claim construction. These courts use the perspective of a hypothetical person to support a broad or narrow claim construction, reflecting the weight given to the competing patent policies.

Practical significance. This article cites key cases for claim construction and the doctrine of equivalents in four major patent jurisdictions: the UK, the US, Germany and Japan. Knowledge of the case law trends in these jurisdictions is essential for drafting patents documents and enforcing patents.

Journal Article.  9229 words. 

Subjects: Arbitration ; Intellectual Property Law

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