行政院國家科學委員會專題研究計畫 期末報告
專利資訊揭露與權利範圍之界定—以權利公示與公信的角
度開展
計 畫 類 別 ： 個別型 計 畫 編 號 ： NSC 101-2410-H-004-036- 執 行 期 間 ： 101 年 08 月 01 日至 102 年 07 月 31 日 執 行 單 位 ： 國立政治大學法律學系 計 畫 主 持 人 ： 沈宗倫 計畫參與人員： 碩士班研究生-兼任助理人員：潘玉蘭 碩士班研究生-兼任助理人員：黃美齡 報 告 附 件 ： 出席國際會議研究心得報告及發表論文 公 開 資 訊 ： 本計畫涉及專利或其他智慧財產權，1 年後可公開查詢中 華 民 國 102 年 10 月 29 日
中 文 摘 要 ： 專利有別傳統物權，為一無體財產權。由於權利屬性使然， 專利所保護的技術內容常具有「非敵對性」與「無耗竭 性」，權利邊界不易測定，不僅弱化專利權人行使權利的正 當性，更衝擊公眾對於專利權範圍的信賴，影響交易安全與 對於專利的合法實施。為解決上述的問題，本計畫嘗試以專 利資訊揭露為核心，本於權利公示與公信的法理，討論專利 資訊揭露與專利權利範圍的關係。在專利公示的法理下，本 計畫將以比較法的方法深入檢討「申請專利範圍」的「明確 性」與「專利說明書」的「得據以實施」或「可實施性」。 同時，本計畫亦就美國專利法下的「書面說明」要件，研究 其於我國專利法體系下的可行性。另外，在專利公信的法理 下，本計畫以前述「得據以實施」或「可實施性」的概念， 作為調節權利的樞紐，此構想將實踐於專利侵害與新穎性的 判斷。 中文關鍵詞： 專利權、公示、公信、申請專利範圍、新興科技、專利侵 害、文義侵害、均等論、可實施性、進步性
英 文 摘 要 ： Patents, different from traditional properties, are intangible. Such attribution leads to the phenomena that the inventions protected by patents are non-rivalrous and inexhaustible. As a consequence, the unpredictability of patents does not only weaken the justification of exclusive rights under patent law, but also impact the secure transactions and embodying the inventions. In order to resolve the aforesaid hardship, this project, under the jurisprudence of ＇public notice＇ and ＇possession＇ attempts to probe into the relation between patent disclosures and the scope of patents. The concept of ＇public notice＇ will bring the project to study the issues of ＇definiteness＇ of claims and ＇enablement＇ of specification. The requirement of ＇written
description＇ established under U.S. patent law is also examined in this project to check whether it is necessary to achieve the goal of sufficient patent disclosures under Taiwanese patent system.
Additionally, this project will follow the concept of ＇possession＇ to study whether ＇enablement＇ should function as impetus to measure the reasonable
scope of patents.
英文關鍵詞： Patent Rights, Public Notice, Public Trusts, Claims, After-Arising Technologies, Patent Infringement, Literal Infringement, Doctrine of Equivalents, Enablement, Nonobviousness
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目錄
壹、前言 ... 1
貳、研究目的 ... 3
參、文獻探討 ... 4
肆、研究方法 ... 5
伍、結果與結論 ... 5
2 壹、前言 由於專利有別於傳統物權，乃一無體財產權，其權利特色反應在一般公共財 產所具備的「非敵對性」(non-rivalrous)與「不可耗竭性」(inexhaustible)，縱然專 利業已登記，權利範圍仍不易確定，實有強化權利公示的必要。專利權利公示的 目的有二，一為向公眾昭示權利的範圍，有助於公眾履行其專利不侵犯的注意義 務，另一為令公眾在技術上有實施專利的可能性，此攸關專利對於產業的實質貢 獻，公示程度愈明確，利用授權等方式實施專利成本愈低，成效愈理想，另一方 面亦有助於累積創新。特別是當專利保護期滿時，充分的權利公示更具有意義。 當專利保護期滿，原本專利所保護的技術內容等同進入的公共領域(public domain) 而成為公共財產，公眾得以任意實施，而無侵權的危險。若專利的權利公示程度 充分，公眾即可專利保護期滿時依公示的內容實施專利，不需投入無謂的研究或 實驗成本，此為專利法意旨之所在，不致發生專利期滿但實際的實施仍由專利權 人掌控的現象，等同變相延長專利的法定保護期間。依本計畫的觀察，我國專利 法關於「申請專利範圍」的「明確性」與「專利說明書」的「得據以實施」(或 可實施性)的規範(新修正專利法第 1 項與第 2 項)，即本於專利權利公示法理而 來，不僅要求專利權利範圍的宣示，更堅持專利的易於實施。 在權利的公信方面，傳統物權法所強調的善意取得，在專利法上的適用雖有 爭議，但本計畫認為權利公信，乃是基於公眾對「申請專利範圍」的信賴，所產 生對於專利權利範圍的節制，或是對於先前技術範圍的調節。由於權利的公示與 公信乃法理的一體兩面，專利法關於「專利說明書」的「據以實施」(或可實施 性)將是調節專利權利範圍或先前技術範圍的重要樞紐。特別是當「申請專利範 圍」有擴張解釋的機會時尤然。專利的文義侵害，其判斷時點是以專利申請日為 基點，即以申請日時的申請專利範圍所隱含的科技狀態，來判斷侵害專利之物或 方法的各要件或步驟是否落入申請專利範圍內。理論上而言，若侵害專利之物或 方法利用專利申請後的「新興科技」，縱然文義解釋可能構成侵害，無論依專利 法理或立於衡平的角度，此侵害專利之物或方法的作成或執行，不應評價為專利 的文義侵害，否則有不當擴張申請專利範圍之虞。然而，不可否認的，隨著科技 的不斷進展，專利文義侵害的解釋實暴露於權利不當擴張的危險。且單由申請專 利範圍的文字結構，實無法直接區辨，符合文義解釋的侵權物品或方法，究為申 請時科技狀態的產物，抑或為申請後？本計畫認為，「專利說明書」的「得據以 實施」(或可實施性)或可作為區辨科技狀態的重要利益衡量要件，亦即以申請專 利範圍中心，以判斷符合文義解釋的侵權物品或方法，依據專利說明書的內容得 「據以實施」或具備可實施性？若答案為肯定，則該物品或方法得解釋為申請時 的科技狀態，符合文義侵害判斷的本旨。
3 專利侵害均等論的適用亦會導致申請專利範圍擴張，且此擴張乃是超乎文義 的創設性擴張。均等論是基於對專利權人公平保護的法理。當他人修改或置換原 專利內容技術評價低的元件而規避文義侵害的追訴，如無均等論之適用，等同允 許他人得以利用修改或置換外具有高技術評價的技術內容，對於專利權人的保護 實不周延。均等論雖有其正當性，但常以「專利侵害時」為衡量時點，導入新興 科技的概念進入評價。縱然均等論已對他人修改或置換專利技術元件行為的「可 置換性」列入考量，限制申請專利範圍不當擴張的可能性，向來卻少慮及他人利 用新興科技所產生的元件，修改或置換原專利元件，對於專利權人所可能產生的 不當增益，亦即新興科技所產生的元件對原專利相對應部分，雖為技術評價上不 重要的置換，但於置換後高度提升原專利的技術評價而使原專利發質變。在此情 形下，為遏阻申請專利範圍不當擴張，「專利說明書」的「據以實施」(或可實施 性)似亦可作為調節權利範圍的依據。 另外，新穎性為專利要件之一，其判斷有賴於發明與先前技術為「單一文件 比對」，此與進步性的評價容認複數先前技術合併觀察的情形有所不同。傳統上， 「單一文件比對」如同專利文義侵害，採取「全要件」對等概念，亦即發明的各 要件需充分反映在同一先前技術上，始被判定罹於新穎性。然而，近來，無論是 專利實務或司法實務對單一先前技術的觀察，傾向採取「動態」的觀念，考量其 他技術資對於單一先前技術的影響，創設出「固有理論」，認為縱然發明與先前 技術相比對下不具有「全要件」對等概念，例如：發明之部分要件與先前技術相 對應的要件有所差異，但依「所屬技術領域中具有通常知識者」的觀點，發明的 要件得由先前技術相對應的要件所推知，前述二者視為相同，發明的新穎性仍不 具備。其實，「固有理論」的適用，某種程度上已擴張了先前技術的範圍，若該 先前技術為一專利，則同時擴張了該專利的申請專利範圍。由於「固有理論」使 先前技術受到其他資訊的影響而擴張，此結果似已抵觸「單一文件比對」的基本 精神。不可否認，新穎性的判斷基礎若僅限於「靜態」的單一文件，亦可能產生 弊端。當發明人利用新穎性判斷時點前所共知或共用的資訊或技術，以修改先前 技術，而令發明在表像上得以區別先前技術而具有新穎性，但實質上，得以區別 先前技術卻為共知或共用的資訊或技術，而非發明本身，此種結果顯與專利法的 意旨相違背。因此，單一先前技術於新穎性判斷上的擴張勢所必然，如何調節其 擴張至合理範圍，從權利公信的角度而言，「專利說明書」的「據以實施」(或可 實施性)似亦有發揮的空間。 貳、研究目的 本計畫的研究方向側重於專利資訊揭露的公示與公信。在專利公示研究方 面，主要是以比較法為基礎，釐清與檢討我國專利法與司法實務關於「申請專利
4 範圍」的「明確性」與「專利說明書」的「得據以實施」或「可實施性」，以貫 徹專利法鼓勵累積創新，以及資訊公開等基本精神。此外，亦可提供專利實務工 作者於專利說明書撰寫，與專利權範圍解釋方面，明確的準則或方針以供參考， 減少權利界定與判斷可能產生不必要的交易成本。在專利公信研究方面，本計畫 的研究將導正專利侵害時關於「申請專利範圍」的合理解釋，特別當第三人運用 專利申請日後的新興科技侵害專利為然，更可合理調節新穎性判斷時對先前技術 「固有意義」的解釋，在專利法對專利權行使的正當性，具有相當的重要性。對 於專利實務界於專利侵害時關於權利主張的預估，與新穎性先前技術範圍的界 定，亦深具意義。 參、文獻探討 因為美國相關文獻眾多，以下僅列舉近年來英文學術期刊所登載的重要文獻：
Burk, Dan L. & Lemley, Mark A., Inherency, 47WM AND MARY L.REV.371,374, 379-84 (2005).
Collins, Kevin Emerson, Enabling After-Arising Technology, 34 IOWA J.CORP.L.1089
(2009).
Crouch, Dennis, An Empirical Study of the Role of the Written Description
Requirement in Patent Examination, 104 NW.U.L.REV.COLLOQUY 382 (2010).
Devlin, Alan, Indeterminism and the Property-Patent Equation, 28 YALE L.&POL’Y
REV. 61 (2009).
HACON,RICHARD &PAGENBERG ,JOCHEN,CONCISE EUROPEAN PATENT LAW (2d. ed.
2008)
Holbrook, Timothy R., Patents, Presumptions, and Public Notice, 86 IND.L.J. 779
(2011).
Holbrook, Timothy R., Equivalency and Patent Law’s Possession Paradox, 23 HARV.
J.LAW &TECH 1 (2009)
Holbrook, Timothy R., Possession in Patent Law, 59 SMUL.REV. 123 (2006)
Mueller, Janice M. & Chisum, Donald S., Enabling Patent Law’s Inherent
Anticipation Doctrine, 45 HOUS.L.REV.1101 (2008)
Schuster, Martina I., Sufficient Disclosure in Europe, Is There a Separate Written
Description Doctrine under European Patent Convention? 76 UMKC L. REV.
491 (2007).
Seymore, Sean B., Rethinking Novelty in Patent Law, 60 DUKE L.J. 919, 954-55 (2011).
Seymore, Sean B., The Teaching Function of Patents, 85 NOTRE DAME L.REV. 621 (2010)
Seymore, Sean B., The Enablement Pendulum Swing Back, 6 NW.J.TECH.&INTELL. PROP.278 (2008).
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B.U.L.REV.63 (2004).
肆、研究方法
請參見本研究計畫之申請書。本研究採用類似傳統社會科學研究方法的「非 介入研究」(non-intervention research)下的「內容分析法」(content analysis)、「歷 史研究分析法」(historical research analysis)以及「比較研究法 」(comparative research)。 伍、結果與討論 本研究的研究成果，主要是以專利侵權與「新興科技」(after-arising technologies) 間的互動為主題開展。從權利公示與公信的角度，專利的權利範圍界定，似應以 專利申請之時點為衡量基準。然而，專利侵權往往發生於專利授予之後，若侵權 人利用專利申請時所未知或不可預測的科技，實施專利的申請專利範圍(特定請 求權)，此等侵權是否應納入專利權人排他權的行使範圍內？若為肯定的答案， 是否與專利的公示與公信原則相牴觸？更甚者，新興科技是否給予過度的保護， 以致妨礙專利所保護發明，未來於技術改良或再創新的可能性？ 此外，無論是專利的文義侵害判斷或均等論的適用，本質上並無區別或評價「新 興科技」的機制，因此，為強化專利權行使的正當性，與恪遵專利法確保技術改 良或再創新的意旨，於文義侵害判斷或均等論適用時，須再尋求一理論基礎，用 以評價「新興科技」，而適度調解專利權人的權利行使範圍，即有相當之實益。 以下所附者，乃本文研究成果的部分發表內容，針對專利侵權與「新興科技」， 作一詳細的論析，並同時檢討可能的「新興科技」評價模式，於文中最後提出本 研究所認為的最適模式。目前，各國專利法已察覺此一新興科技問題的存在，無 論在學術界或司法實務界，對於新興科技於專利侵害的評價模式，至今尚未有共 識。本研究於學術研究的貢獻，有以下三方向：(一)確立「新興科技」對於專利 權正當性的影響；(二)檢討現今各國對於「新興科技」於專利侵害中的評價模式； (三)提出本研究認為最適的「新興科技」評價模式，建立專利權得以納入的新興 科技範圍，並詳細說明此模式於司法實務中的操作方式。
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Celebrating Diversity: 10years of ASLI
10
th
Asian Law Institute Conference
Thursday and Friday, 23 & 24 May 2013, India
COVER PAGE FOR PAPER SUBMISSION
Patent Infringement and Reasonable Allowance of New Technology—Review of application of Literal Infringement Test and Doctrine of Equivalence under Chinese and Taiwanese Patent Laws
Chung-Lun Shen
Associate Professor, College of Law, National Chengchi University
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Note:
Please note that ASLI will distribute the papers to conference participants only for the sole purpose of discussion. The papers might also be put on a USB thumb drive to be distributed to conference participants. Neither the copies in the USB drive nor the printed copies of individual papers will constitute publication; papers will not thereafter be published by the conference organizers nor made available to individuals or libraries. Presenters retain the copyright to their papers and are free to commit them for publication elsewhere. All papers should not be cited without prior permission from the authors.
For ASLI Secretariat Use Only
Date of Presentation (delete where applicable):
Thursday, 23 May 2013 Friday, 24 May 2013 Panel Assigned:
I. Introduction
Distinguished from traditional tangible properties, patent must rely upon the claims and the specification to provide with a public notice about the scope of exclusive rights. As the determination of patent infringement is subject to the violation of exclusive rights, the claims of a patent play a key role in deciding what acts would constitute patent infringement. Generally, there are two types of tests under patent law for the determination of patent infringement, respectively, literal infringement test and the doctrine of equivalents. While the former focuses upon the claims of a patent to find out whether the accused product or method was element-by-element read into any claim, the latter is to secure the fairness of patent protection by having the evaluation of patent infringement where the accused product or method was made through insubstantial improvement about the patent. According to patent law, the time point for the determination of literal infringement is set up on the date of patent application. However, the patent infringement occurs usually after a patent was issued. When the infringer took advantage of new technologies arising after the date of patent application, it is worth considering whether such technologies would break the public notice of a patent and endow the patentee with an inadequate stretch of the patent. Similarly, the doctrine of equivalents also runs into the issue of new technology, especially on the ground that it is applied in accordance with the time point of patent infringement. In order to ensure the determination of patent infringement would be justified to meet with the
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jurisprudence of patent law, and prevent the patentee from being overprotected, this article attempts to discuss the impact of new technologies on the determination of patent infringement. It is also a significant issue under this article to detect the reasonable allowance for incorporation of new technologies into the determination of patent infringement under literal infringement test and the doctrine of equivalents.
The article mainly relies upon a theoretical construction to justify the analogous concept of the nonobviousness requirement under patent law to ascertain the reasonable allowance of after-arising technologies on the determination of patent infringement. Some possible approaches to deal with the issue of after-arising technologies are also initially reviewed in accordance with the rationale of patentlaw. The article is expected in two ways of refinement to strengthen the position about the issue of after-arising technologies. One is to propose the theoretical ground for the model the author proposed for the resolution of disputes of after-arising technologies. Another is to try the best to make the model workable in the various jurisdictions.
However, the issues of after-arising technologies under patent infringement rarely became the main concerns of judicial decisions. The reason why the issue of after-arising technologies is not popular under patent law, according to the observation of the author, is not that the issue was ignored, but that a ideal model and its justification for the issue is hard to be settled. As a consequence, in some cases of after-arising technologies, the court chose to resolve through claim construction or the application of DOE, rather than positively proposed a legal ground to avoid absolute interference of exclusive rights into after-arising technologies. The author hopes sincerely that the proposed model could deliver a justified base under patent law for the reference of future development of case law or judicial cases on the issue of after-arising technologies under patent infringement.
II. Patent Infringement and Reasonable Allowance of After-Arising Technologies.
A. Predicament of Literal Infringement and Doctrine of Equivalents
Under patent laws in various jurisdictions, patent infringement would be determined through the practice of claims or the doctrine of equivalents. On the one hand, without the patentee’s authorization, to practice claims to materialize the abstract technologies contained in the claims, for the purpose of the manufacture of patented products, or the execution of patented process, constitutes a literal
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infringement under patent law. One the other hand, even if the infringer didn’t practice any claim completely, having one or more elements of the claim been changed, such partial materialization still be evaluated as an infringement, on the condition that the changes reflected in the accused product or process, comparing with the original elements of the claim, never lead to a substantial difference under the observation of PHOSITA(person having ordinary skill in the art). That is the application of Doctrine of Equivalents. In spite of the function to secure patent exclusive rights shared by both literal and equivalent infringements, the jurisprudences behind the two infringements are very distinctive from each other. Moreover, the two infringements have also own defects on the determination of infringement that run possibly against the gist of patent law motivating the improvement and cumulative innovation of technologies.
Patents are among intangible properties. Claims of a patent serve a public notice to delimit the boundary of exclusive rights enjoyed by the patentee. The specification is read to clarify some ambiguous parts of claims for the interpretation on the width of patent. Under the peripheral system, like U.S. patent law, on alerting the prohibition of an absolute importation of the specification into the interpretation of claims, case law has not denied the function of the specification for ascertaining the inventor’s real intention in drafting the claims for the patent application. 1 Further, to be self-evident, under eclectic system, like European countries, Taiwan and China, it is codified to affirm that the specification is among the most significant sources for the construction of claims. 2 As a consequence, when claims work with the specification to deliver information about a patent, the public theoretically should grasp the scope of patent as well as to what extent the claims might be reduced into practice. From the point, the achievement of public notice on a patent seems to be justified for the patentee to take advantage of the literal infringement to seek remedies against third parties’ practicing patent claims without any authorization.
However, in reality, claim construction is awkward because the ultimate purpose of such construction is to probe into the intention of the inventor in designing the claim. The plain and reasonable interpretation of a claim isn’t made by referring to the ordinary or technical dictionary that the public can easily access for a common meaning of any element in the claim without bearing extra costs, but the inventor’s own lexicography.3 Under patent law, to respect the meaning of a claim the inventor expects, the intrinsic evidence is prioritized over the extrinsic one for claim
1
See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)(U.S.).
2
See Article 58(4) of Taiwan Patent Act; Article 59 of China Patent Act.
3
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construction when there is any ambiguity on the element of a claim read between the patentee and third parties.4 Only on the occasions where the intrinsic evidence couldn’t resolve the conflicting interpretation of a claim, the extrinsic evidence is justified to come into play over claim construction. According to the experience of various jurisdictions on patent law, it seems that the intrinsic evidence didn’t work so efficiently as the public have anticipated in exploring the real intention of the inventor on what the elements of claim should be. It is well observed that the specification as a significant source among intrinsic evidence, rather than settling the disputes on claim construction, often brings in uncertainty of interpretation due to interplays between a claim and its specification.5 While the importation of examples in the specification is prohibited to fix the interpretation about the scope of a claim, in some cases, the specification may serve a limitation, in other cases, for a claim that meets with the real intention of an inventor. As a result, without definite guidelines, what the correlation between a claim and its specification obfuscates the pubic most is how to distinguish under what occasions where the specification may be the limitation of a claim, from under what ones where the interpretation of a claim may break through the specification. From this point, the public seems to bear more costs to recognize what the public notice of a claim is, because a claim couldn’t directly pass down its reasonable scope by wording. Such phenomenon substantially hinders the function of public notice of a claim, and further affects the justification of the assertion of patent literal infringement. Aside from the weak public notice of a claim due to difficulty in setting up a clear standard for claim construction, claim construction is also faced of a predicament where the determination of literal infringement would contradict with the gist of patent law that always prevents the possession of prior art from the patentee and secures technological improvement and cumulative innovation. The determination of literal infringement under patent law is through comparison between the accused product and a claim to ensure whether all elements of the accused products would be read into the claim on a corresponding basis. If a claim is mechanically interpreted to read the elements of the accused products without checking its capacity allowable under patent law, the patentee will be given a chance to take advantage of prior art or later-developed technologies to catch excessive interests that patent law find unbearable. The overcompensation under this situation through the literal infringement surely will collapse the interest balance between the patentee and the public, as well as the sound evaluation on patent practice established by patent law system. For example, under a hypothetical scenario, we assume that Claim 1 of Patent A is about an article, composed of Element X1, Element Y and
4
Phillips v. AWH Corp., 415 F.3d at 1320-22.
5
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Element Z. Each accused product made and sold could be divided into Element X2, Element Y and Element Z. And the accused product is read in aforesaid Claim 1 since Element X1 goes through claim construction to cover Element X2. In other words, the manufacture and sale of the accused products constitute the literal infringement of Claim 1 of Patent A. But the fact can be proven that the technology for making the accused product had been available prior to the application date of Patent A. It means that the manufacture and sale of the accused product had already been serving as prior art for Patent A according to patent law. Without further checking if such prior art would affect the patentability of Patent A, due to the lack of special mechanism in the determination of literal infringement to detect if prior art would be incorporated in claim construction, while the manufacture and sale of accused products are evaluated as the literal infringement, it is easy to bring the technology positioned as prior art directly into the possession of the patentee over Claim 1 of Patent A. Certainly, it would be denied that claim construction might be possibly doing some fine tuning to preclude prior art from going within any claim of a patent. However, such function is the result of manipulation through considering prior art, rather than that of the inherent application of the literal infringement.
We also are setting a scenario for after-arising technologies. The infringer made and sold the accused product that comprises Element X3, Element Y and Element Z in the market. It is assumed that Element X3 has not been developed until the infringement date of Patent A. But Element X3 is interpreted into the definition of Element X1 of Claim 1 of Patent A according to claim construction. As a consequence, when the manufacture and sale of accused products constituted the literal infringement against Claim 1 of Patent, the patentee simultaneously catches Element X3 as part of Claim 1 for the exercise of exclusive rights under patent law. Since Element X3 had no chance to be fixed in the wording of Claim 1 at application date, it is reasonably referred that Element X3 was never prosecuted with Element Y and Element Z as a whole to secure the patent eligibility and patentability. It is worth questioning further under this scenario if Element X3 not prosecuted would be justified to become the subject matter which the patentee could exercise exclusive rights over.
As to Doctrine of Equivalents, its function under patent law merely concentrates on the ground of fair protection for the patentee, and works to prevent the infringer from avoiding unreasonably any action of literal infringement by doing some insubstantial changes to Claim 1 for the manufacture and sale of accused products. In addition, it is a common thought that the critical date for the application of DOE is
12
not established at the application date of patent, but at that time when the infringement was done. Compared with literal infringement, scenarios mentioned above seem to possibly happen in the application of DOE. We assume that the accused product contains Element X4, Element Y and Element Z. In spite of Element X4 being out of the scope of Element X1, under the scenario, based upon an insubstantial change from Element X1 to Element X4, the manufacture and sale of the accused products are still evaluated as an infringement on Claim 1 of Patent A. As the determination of literal infringement, DOE possibly leads to an extension of Claim 1 to subsume Element X4 as part of the scope of exclusive rights. But the technology for making the accused product had existed before the application date of Patent A. As a matter of fact, the accused products are positioned as prior art of Patent A. On another scenario, if Element X4 is developed after the application date of Patent A, the application of DOE also makes the accused products determined as a patent infringement, even though the accused products never existed in the market at the application date of Patent A.
B. Novelty and Patent Infringement
Prior art has been playing a core role in determining the patentability of an invention under patent law. An invention may be transformed to a patent if it can be conceived to transcend the technological blocks set up by prior art. Not only does the patentability make an invention distinguished from other technologies exist at the date of patent application through specific elements, but it also secures the advance of an invention over other technologies according to evaluation of PHOSITA when a patent application is filed. The former is the requirement of novelty under patent law. On the one hand, the novelty requirement promotes new inventions under patent law to correspond to continuing demand of industries on technologies. The legislative purpose of the novelty requirement is declared in various jurisdictions to emphasize that the patent system is established to promote industries’ technological developments through the innovation of new things. Any possible innovation comes from new things or new uses of old things. It can’t be imagined that an invention containing old things would be granted as a patent to exclude the public from accessing the invention. Without technological contributions, merely by reorganizing old things, it is hard to make an invention be a patent. On the other hand, from the angle of limitation of exclusive rights, novelty is justified because it protects the public from being deprived of the benefits already contributed by prior
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art.6 The significant meaning of innovation is to create a new status where the inventions exist to produce more technological benefits shared by the public, than ordinary things did under an old status. The new status should be evaluated prospectively and dynamically while the old status remains steadily and statically. And the new status always parallels the old one without interfering with each other. Anything just transposed from the old status never establishes a new status. Theoretically, under the element-element comparison for determination of literal infringement, it is possible to read prior art into a claim of a patent through claim construction, provided that the accused product or process was made or practiced to base on technologies defined within prior art of the patent. However, such the result contradicts with the legislative policy of the requirement of novelty under patent law, and makes no difference to entitle the patentee to take possession of benefits already enjoyed by the public before the patent application, rather than the harvest resulting from innovation. With being shared with the same token, the application of DOE also runs into the above-mentioned predicament by subsuming prior art to determine the patent infringement. As a consequence, prior art of a patent really cautions us that a legal boundary derived from prior art is always with claim construction and the application of DOE to determine patent infringement.
C. Non-obviousness and Patent Infringement
Comparing with the requirement of novelty under patent law, nonobviousness is required to ensure that an invention gets beyond prior art on inventive quality to be granted as a patent, even if such an invention has been made to meet with the requirement of novelty. The more excellent inventive quality is not merely showed in technological difference and improvement, when an invention is evaluated with reference to prior art. Instead, the attention of the requirement of nonobivousness is paid upon whether the difference or improvement is a necessary development, in terms of PHOSITA, by teaching, suggestion and motivation of prior art that mixed with the fundamental knowledge of PHOSITA and other objective circumstances, like customer demands in the market. There are two significant meanings in the requirement of nonobivousness, which also relate to the legislative policy of patent law. First, An invention that was conceived merely by following the path driven by prior art recognized by PHOSITA is impossible to implement the innovation policy inherent in patent law. If this invention were qualified as a patent, the access of the public to ordinary logics and knowledge derived from prior art would be blocked. Such the patent also would frustrate the technological improvement and further
6
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innovation about prior art. Under this situation, the patentee simultaneously would be inadequately given a chance to occupy the benefits contributed by prior art, and strengthen its controls by the exclusive rights over the invention that were within the shadow of the inventive quality of prior art under patent law. Second, since the requirement of nonobviousness indicates the inventive quality of a patent, it may be used as a basis to recognize to what extent a patented invention exceeds prior art in light of the evaluation of PHOSITA. Excellency on inventive quality over prior art contributed by the patentee is justified to support the assertion of exclusive rights enjoyed by the patentee under patent law. In other words, the benefits resulting from the requirement of nonobviousness for the public works as a core consideration to compensate for increased costs borne by the public produced by the execution of exclusive rights.
D. Patent Infringement and after-arising technologies
The elements of a claim are not always static, especially when they are drafted in a more abstract way to describe a device or component that can works an expected function. Although the claim construction on the literal infringement should be fixed at date of patent application according to patent law, the comparison of all-element between the accused product and a claim is inevitably vulnerable to the perception of PHOSITA at the date of patent infringement.7 Especially, the claim construction may entitle the patentee to catch specific elements into the scope of exclusive rights, which are formed by the technologies never recognized when the patent application was filed. In other words, even if all elements of an accused product or process are read into a claim for the determination of literal infringement, part elements of the product or process are the results of new technologies developed after the date of patent application. Scholars under patent law usually recognized such new technologies as after-arising technologies. For example, when a personal storage device serves an element in a claim, and was expected to cover a floppy disk at the date of patent application, it is possible for the patentee to read a USB flash drive into a claim as a personal storage device at the date of literal infringement, provided that the infringer practiced the claim to make an accused product having a flash drive as an element. In order to carry through on the public notice of a patent, it is a golden rule that the determination of literal infringement should be set at the date of patent application. However, patent law never teaches the public how to well find the boundary of aforesaid public notice such that even third parties took advantage of
7
See Kevin Emerson Collins, The Reach of Literal Claim Scope into After-Arising Technology: On
15
new technologies unforeseeable at the date of patent application to practice the claim, the literal infringement seems unavoidable through the comparison of all elements. In addition, nor did patent law or any doctrine case law or judicial decisions established leads us to exempt from the literal infringement on after-arising technologies. To be worse, we are never instructed by patent law to distinguish the literal infringement involving after-arising technologies from the one just committed through technologies known when the patent application was filed. That is why more than one academic observation over the interaction between the literal infringement and after-arising technologies concluded that the time basis for the determination of literal infringement has substantially been set at the date of patent infringement. 8 As the author emphasized much on the requirement of non-obviousness under patent law, it is worth noting that while the requirement of non-obviousness ensure more excellent inventive quality than prior art to qualify an invention as a patent, the scope of exclusive rights enjoyed by the patentee should not be beyond the contribution of the inventive quality checked by non-obviousness. In other words, in terms of the literal infringement, the interpretation of a claim seems to be limited by the contribution of the inventive quality of a patent, compared with prior art. It is hard to imagine that patent law would entitle a patentee to the exclusive rights to an infinite extent, even subsuming the technologies beyond the original contribution of a patent into a claim that the exclusive rights always secure against unauthorized practices. As a result, the exquisite symmetry between the inventive quality and the exclusive rights bolstering the justification of claim construction is about to collapse owing to the interference of after-rising technologies with the determination of literal infringement.
As a matter of fact, the issue of after-arising technologies also confronts with the application of DOE. According to patent law, DOE is applied to remedy equitably insufficiency of the assertion of literal infringement, when third parties merely made an insubstantial change to elements of a claim to escape from the comparison of all elements between an accused product or process and a claim. Based upon the fair protection for the patentee, DOE is allowed to function beyond the limitation of a claim to evaluate accused product or process derived from a claim through insubstantial changes as a patent infringement, paralleling the literal infringement. In other words, on condition that the accused product or process, compared with the claim, run the substantially same way to approach the substantially same result, under the substantially same function, the accused product or process will be caught by
8
See Mark A. Lemley, The Changing Meaning of Patent Claim Terms, 104MICH.L.REV.101, 103
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DOE as a patent infringement.9 Also, besides the aforesaid the tripartite test, the known interchangeability, being evaluated from the technological difference between the accused product or process and a claim, may lead to the determination of patent infringement under DOE, provided that the interchangeability can prove insubstantial changes of the claim made by the accuser.10 It is noted that the application of DOE under patent law is subject to the time of patent infringement, other than the date of patent application instructing the determination of literal infringement. As the author’s observation, it is possible for case law or judicial cases development to put much emphasis on preventing the unscrupulous copyists from merely exploiting the patent without any substantial contribution to the patent improvement or re-innovation but by a minor technical adjustment over a claim to exempt itself from literal infringement. As a consequence, the most persuasive reason why DOE is applied on the time base of infringement seems to be to work for fairness to the patentee, rather than that case law would like to add an exceptional rule into the original public notice policy of a patent focusing upon the date of patent application. To take U.S. patent law as an example, case law recently has been reiterating that DOE is never intended to expand the claim scope of a patent, but takes advantage of exclusive rights to achieve the goal of fairness under patent law.11
However, even if the application of DOE never contradicts with jurisprudence of claim construction and merely achieves a necessary equitable result of fairness, it can’t be denied that the exclusive rights under patent law enhanced by mechanism of DOE may easily bring after-arising technologies into the scope of a claim, like claim construction under literal infringement may do. According to case law or development of judicial cases, it is found that DOE application is faced of more exceptions than the determination of literal infringement is. After the author’s organizing and analysis about the exceptions of DOE, there are mainly three directions of thoughts contemplated under case law or development of judicial cases. One possible direction of thoughts goes to reserve sufficient room for cumulated innovation. This thought represents the establishment of all-element doctrine serving an exception for DOE. The all-element doctrine exempts third parties from patent infringement under DOE, as long as they could develop any element not included in a claim of the patent.12
9
See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608-10 (1950)(U.S.).
10
See Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 36, 39-40 (1997) (U.S.).
11
See Wilson Sporting Goods Co. v. David Geoffery & Associates 904 F.2d 677, 684 (Fed. Cir. 1990) (U.S.)
12
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The second possible direction of thoughts concentrates upon the trusts of the public on disclosing the idea of the claim drafter, on the behalf of the patentee, about a claim or its specification that forms the original boundary of a patent, or any adjustment to a claim during patent prosecution. To secure the former trusts against the distortion of public notice, the exception of “public dedication” was recognized under patent law.13 If a patentee selected to disclose the examples of a specific element in the specification, other than concluded directly them in a claim, and these examples should have been concluded in the aforesaid claim for the interpretation of the aforesaid specific element, DOE will not be allowed to incorporate the alternative interpretation of a specific element of a claim in the specification into claim construction. To clarify, when third parties substituted an alternative for a specific element in a claim, and this substitution was not disclosed in the claim but in the specification, the patentee was deprived of any allowance to apply DOE to find the accused product or process infringing. Another exception of DOE to connect with trusts on public notice is “prosecution history estoppels”.14 Under this exception, if the patentee amended a claim of the patent to ensure patentability during patent prosecution, the scope of exclusive rights will be limited to the amended claim, even though the patentee seeks the application of DOE, unless the corresponding element to amended element had been unforeseeable at the date of patent application.15 As a consequence, it may be observed that prosecution history estoppels has assumed trusts of the public upon patentee’s decision about the amendment of a claim for patentability that produces a notice of the scope of the exclusive rights, and fixed the application of DOE into the amended claim inasmuch DOE will not be involved with unforeseeable elements corresponding to the amended element.
The third possible direction thought tends to protect prior art from the exploitation of the patentee through the application of DOE. It is called as the defense of prior art.16 The justification for this defense is that prior art has established existed order the public has relied upon to develop technologies or existed benefits the public enjoyed in the public domain, this status should not be broken due to functions of patent law system, on the one side. On the other side, it would contravene the gist of patent law on encouraging continuous innovation of industries if DOE is applied to cover, instead of distinguishing from, prior art in the exclusive rights.
13
See Johnson & Johston Associates, Inc. v. R.E. Service Co., Inc., 285 F.3d 1046 (Fed. Cir. 2002) (U.S.).
14
Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. at 30-34.
15
See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740-41 (2002) (U.S.).
16
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E. Reasonable Allowance of After-Arising Technologies
According to traditional exceptions, case law or judicial cases tended to remedy possible distortion to the function of public notice of a claim and inappropriate expansion of exclusive rights over prior art resulting from the application of DOE. However, it seems hard to find any idea delivered or hinted by case law or judicial cases to deal with the issue of after-arising technologies connected with patent infringement, and determine the broadest capacity of a claim allowed to contain after-arising technologies through asserting literal infringement and applying DOE. In order to avoid a loose allowance over after-arising technologies that would frustrate cumulative innovation of technologies, academics are much concerned about how to establish specific approache to resolve the problem of inadequate enrichment for the patentee caused by after-arising technologies.
Theoretically, there are couples of possible approaches to mitigate negative effects caused by after-arising technologies that were introduced to the determination of literal infringement and application of DOE. A possible way to deal with the issue of after-arising technologies is to have narrow interpretation against ambiguous terms of a claim, then leaving the reasonable scope of a claim be decided by DOE.17 In this thought, it seems to deliver a meaningful indication that DOE is better fitted to subsume after-arising technologies to be against infringement than the determination of literal infringement is. Since ambiguous terms of a claim are vulnerable to the discretion of claim construction, narrowing the interpretation of a claim, to the extent that the status of technology for such the interpretation would comport with that at the patent application date, is considered effectual to protect a claim from being enriched by after-arising technologies. Simultaneously, this thought also relies much upon DOE to correspond appropriately to after-arising technologies. Perhaps, the most possible ground for such the stand might be recognized as the result of following the inherent characteristic of DOE that is legally exposed to after-arising technologies according to the date of patent infringement. However, it seems neither the tripartite test nor the insubstantiality test would work to evaluate the reasonable allowance of after-arising technologies in the scope of exclusive right against patent infringement. Instead of the evaluation of after-arising technologies, the application of DOE always concentrates on the fairness of patent protection. From this point, DOE is never inherently designed to resolve the dispute about after-arising technologies under patent infringement. As a matter of fact, according to U.S. patent case law, the application of DOE even is not capable of discern whether the
17
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technologies covered by DOE as patent infringement were foreseeable at the patent application date. While the defendant raised the defense of prosecution history estoppels against the application of DOE, the Supreme Court especially found a leeway for the patentee to overcome such the defense provided that the patentee would prove the unforeeability of specific alternatives over amended elements of a claim at the patent application date. In other words, the effects of prosecution history estoppels possibly led to a result that the patentee merely constrains the application of DOE to the literal scope of the amended claim. However, the court thought that the patentee should not completely bear the rigid legal effects on the application of DOE to bar the coverage from unforeseeable corresponding elements. A special exception is eventually fixed to assuage the defense of prosecution history estoppels such that the patentee still asserted DOE to have unforeceeable technologies. From this point, regardless of any possible jurisprudence existing behind unforeeability connecting with DOE, it can’t be denied that DOE never automatically functions to implement any mission of interest refinement pursued by unforeseeable technologies. Under patent law, unforeeability is possibly among the factors that we would consider in evaluating the significance of after-arising technologies about the determination of patent infringement. As we mentioned above, since DOE fails to deal with the issue of unforceable technologies, it is hard to anticipate that it would consummate the interest consideration about the reasonable allowance of after-arising technologies when a patent infringement occurs.
Another thought comes from the fundamental review of patent law system about claim construction. Under the peripheral system, the uncertainty of claim interpretation, as well as the designed extension of exclusive rights through DOE, is really susceptible to the arbitrary interference of after-arising technologies without adequate means to check the justification of such technologies. The growing of a claim from the patent application date seems inevitable according to the practical experience of claim construction. Shifting to the central system, the core of an invention needs to be established for public notice on the scope of exclusive rights, and the realistic boundary of a patent would be determined by the court according to a reasonable development of the inventive core when patent infringement was done. Theoretically, there is no distinction between literal infringement and equivalent one. Based upon the recognition of the core of an invention and its reasonable expansion to built up the patent scope, claim construction may work against the patent infringement that were determined by literal infringement or DOE under the peripheral system. Perhaps, due to the specific characteristic of inventive core, the issue of after-arising technologies would not be seriously taken. But the same issue
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is expected to happen when the reasonable expansion of a claim is desired to decide what acts constituted patent infringement. It should be admitted theoretically that comparing with the mechanical application of DOE for the pursuit of fair protection, the central system find more room for the court to build up the reasonable scope of exclusive rights through interest consideration, inclusive of after-arising technologies. In practice, it is still worth ensuring with more observation if the issue of after-arising technologies is necessarily the concern of claim construction under the central system. Proposing any adjustment over the peripheral system with reference to the jurisprudence of the central system is undoubtedly conducive to the enhancement for the function of public notice over the patent scope, and the justification for claim construction. The issue of after-arising technologies, as well as its delicate interest consideration seems to be placed at an uncertain status even though the court could catch the opportunity to deal with such the issue well.
Facing a paradox occurs when the fixation of the literal scope of a patent at the application date in theory collides with the growing of that at the infringement date in reality, a thought was proposed to settle such a paradox by doing more refined claim construction on “thing” and “meaning”. In terms of patented products with reference to a corresponding claim, the intrinsic properties may be found to distinguish themselves from other kinds of products. In other words, the intrinsic properties constitute the essential feature of patented products. Other properties than the intrinsic ones are classified as the extrinsic properties. Instead of substituting the intrinsic properties, the extrinsic properties merely serve to supplement some materials or components to strengthen the function or structure of patented products. Approaching the aspect of meaning, patented products may be defined either “denotational meaning” or “ideational meaning”. The former works to stand for such products in the world while the latter is helpful to distinguish such products from the same kind of things through specifying them with expression. Based upon the division of “thing “ and “meaning”, a possible way to resolve the disputes of after-arising technologies under patent law is to provide with different treatment about claim construction. Since the intrinsic properties of patented products express core characteristics in the products, it is better to hold its interpretation in the claim according to the technological status of the patent application date. Relatively, the claim interpretation of extrinsic properties as a function of supplement for intrinsic properties seems to be allowable to catch after-arising technologies for determination of patent infringement. As to the claim interpretation of meaning, the similar model may be brought up to keep the status of denotational meaning of patented products at the application date, and to give the ideational meaning a flexible
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interpretation to go by after-arising technologies.
Although the division of “thing” and “meaning” establishes a new perspective probing into reasonable allowance of after-arising technologies under claim construction, it seems doubtful about whether the ground for the division always follows the jurisprudence of patent law that instructs claim construction to determine adequate scope of the exclusive rights. Literal infringement is admitted under patent law to secure the patentee’s domination over the practice of claims pursuant to the status of public notice of such claims that stands by the filing date of a patent. Simultaneously, when any coverage coming within exercise of exclusive rights through claim construction excessively contravenes the public notice of patent, determination of the literal infringement should be seriously scrutinized to ensure if the unjust enrichment would be made to the patentee, or the unbearable cost would be shouldered by the public, especially the potential inventors for improvement or cumulative innovation. It is the issue of after-arising technologies this article focuses upon that possibly develops against the public notice of patent to favor unfairly the patentee. However, instead of being divided by resorting to exclusive interest consideration and evaluation under patent law, the recognition of intrinsic and extrinsic properties of patented products originally comes from ordinary people’s observation without any clear indication about claim construction. Even if the intrinsic properties may be used to present some essential characteristics of patented product, these characteristics serving to distinguish from other things are not necessary to meet with the evaluation of PHOSITA under patent law. In other words, the essential characteristics of patented products are not equivalent of the core of a claim reflected in patented products that would be evaluated by PHOSITA, compared with prior art. As a consequence, it is worth questioning if using after-arising technologies to practice a claim to materialize the intrinsic properties would result in the opportunities where the patentee might take advantage of literal infringement to asset a broader scope of a patent than what is tolerated by the core of a claim. Unless sufficient evidence could be supported to go opposite, theoretically, it is possible that applying the after-arising technologies to the intrinsic properties of patented products for asserting literal infringement is still justified by the perception of PHOSITA because determination of such literal infringement never influences the evaluation of the core of a claim. By the similar argument, the phenomena ought not be ignored where the extrinsic properties augmented by the after-arising technologies bring about a metamorphosis to the core of a claim, and the right to remedy the literal infringement under this situation will make the patentee‘s exclusive rights go beyond the boundary of a claim. It seems to be problematic to rely much upon the
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division of “thing” to give adequate interest consideration between claim construction and after-arising technologies under patent law. The division of “thing” sometime is vulnerable to the risk of deviation from the evaluation of PHOSITA on a claim.
Since the division of “meaning” is observed from the angle of linguistics, other than PHOSITA’s perception, the dispute of after-arising technologies arguably would make claim constriction through such the division run into the similar predicament to what the division of “thing” has been done.
Even though the division of “thing” and “meaning” better induces the settlement of after-arising technologies under claim construction, it seems hard to prevent the same issue from occurring in the application of DOE. On the one hand, DOE is inherently designed to function at the technological status of patent infringement. On the other hand, under the paramount jurisprudence of fair protection instructing DOE, there is little room for other interest consideration delivered by the division of “thing” and “meaning” to work with the gist of fair protection under DOE. Eventually, the division of “thing” and “meaning” is not helpful in DOE for dealing with the issue of after-arising technologies.
The requirement of enablement under patent law could also serve as a leverage to deal with the issue of after-arising technologies, either on application of DOE or determination of literal infringement.18 It is well known that the original function of enablement is to secure the public’s access to a patent by referring to specification without undue experimentation. Especially, in the expiration of a patent, the requirement of enablement is compatible with the gist of patent law that prevents exclusive rights from substantially dominating the public domain where the expired patent is located. Were it for mandatory enablement of specification, some patentees might take advantage of insufficient disclosure in specification to keep necessary information for practice of the patent exclusive to itself. Under this situation, due to poor disclosure about patent information, even though the expired patent has come into the public domain, the only one capable of practicing successfully such patent under reasonable transaction cost is the patentee. The secrecy of patent information is tantamount to the illegal extension of the term of a patent. As a consequence, the
18
See Kevin Emerson Collins, Enabling After-Arising, 34 IOWA J.CORP.L. 1083, 1093-94 (2009); Timothy R. Holbrook, Equivalency and Patent Law’s Possession Paradox, 23 HARV.J. LAW &TEC 1, 40-43 (2009).
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granting of a patent is justified merely on the condition that the patentee has fulfilled its obligation to disclose sufficient information for patent practice at the date of patent application. Insofar as what the patentee has contributed to for enablement, the possession of the patent is affirmed under patent law. The scope of possession entitles the patentee to asserting exclusive rights against patent infringement.
Based upon the concept of possession of a patent, it seems that the requirement of enablement under patent law could be used to detect the reasonable allowance of after-arising technologies as a defense against patent infringement. In other words, when patent infringement is made by third parties through uses of after-arising technologies, either as literal infringement or as application of DOE, the accused product or process would be hypothetically regarded as a claim of infringed patent. Further, it should be observed if such claim were practiced by PHOSITA without undue experimentation by pursuant to specification of the infringed patent. The affirmative answer indicates aforesaid after-arising technologies are within legal possession of the patentee. Therefore, it is reasonably allowed for the patentee to invoke patent infringement to bring those after-arising technologies into the scope of exclusive rights. This is the test of enablement. Following the example mentioned above, it is assumed that the infringer used Element X5 with Elements y and z to manufacture and sell the patented product that is claimed a combination of Elements X, y and z as Claim 1 under Patent A, without the patentee’s authorization. There are two preconditions for this scenario at the same time. According to the aforesaid fact, the manufacture and sale without the patentee’s consent constituted patent infringement either by determination of literal infringement or application of DOE. In addition, compared with Element X, Element X5 is within the definition of after-arising technologies under this article. When the enablement test functions, it is expected to probe into whether the specification of Claim 1 under Patent A would enable the infringing product that comprises Elements X5, y and z. If PHOSITA could refer to such the specification to manufacture the infringing product without undue experimentation, it might be inferred that the patentee is justified to cover the infringing product in claim construction or equivalent extension of Claim 1 through asserting patent infringement. It is undeniable that the possession concept under the test of enablement sets up a possible justification under patent law to probe into reasonable allowance of after-arising technologies under patent infringement. However, the test is still worth being deeply reviewed.
Ordinarily, the requirement of enablement under patent law is assumed in capability of the patentee of providing sufficient disclosure on specification. It is the
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patentee’s obligation to prove its possession over the invention being potentially the subject matter of a patent. Any failure of sufficient disclosure to enable PHOSITA to practice the patented invention without undue experimentation, due to lack of due diligence of the patentee, or the patentee’s other considerations would deprive the patentee of possessing such invention, through rejection of the patent application, public reviews over the granted patent, or defenses of patent invalidity for patent infringement. The real meaning of the aforesaid obligation under patent law is to impose the enablement requirement upon the patentee, and the disadvantages would be delivered to the patentee provided that the patentee didn’t satisfy this requirement but should have done so according to expectation of patent law. Nonetheless, after-arising technologies are occurring after the patent application date, and are not always predictable at that time when the patentee drafted claims and the specification for patent application. Compared with the fulfillment of enablement for patent application to possess the patented invention, it seems quite distinctive to analogize the concept of possession to determine the reasonable allowance of after-arising technologies in assertion of patent infringement. It is not anticipated to request the patentee crosses time gap to enable after-arising technologies by specification set up at the date of patent application. Simultaneously, it also lack a justified ground for the patentee to possess unpredictable after-arising technologies merely through satisfaction of enablement requirement under which the status of technological development was fixed at the date of patent application. If the concept of possession through analogous application of enablement requirement is used to determine allowance of after-arising technologies, it is tantamount to follow an aleatory way to decide the fate of patent infringement without a persuasively objective foundation. Moreover, even though the concept of possession is suitable as an objective approach to deal with the issue of after-arising technologies under patent infringement, the test of enablement with reference to specification works poorly to detect what types of after-arising technologies that overcompensates the patentee as a disproportion to what the original patent has contributed to the public. Therefore, it would be possible that some after-arising technologies are proven to be possessed by the patentee, but such possession fails to secure the symmetric balance between the scope of exclusive rights and technological contributions a patent is anticipated by patent law legislators to convey. Under this phenomenon, the imbalance of interest consideration seems harmful to the gist of patent law promoting cumulative innovation.
As the author argued above, in terms of the nonobviousness requirement under patent law, the exclusive rights are justified by the excellence of inventive quality a
