Modern patent system emerged to protect invention(s) in science and technology, for example, new machines, devices, chemical and technological compositions as against the pure concepts. The term ‘Intellectual Property’ is used as an umbrella term for patents, copyrights, trademarks, and other laws. Under the English law, initially the terms was envisaged of as a ‘chose in action’ to express an ‘intangible property’ in contrast of ‘tangible property’. Distinguished economist like Max Weber and Douglas North in their empirical and doctrinal studies argued that the system of intellectual property has a significant affect in the economic development of a country. Subject to the permission of its inventor, once an invention is patented under the relevant law, the inventor acquires an exclusive entitlement to the usage of such invention. The law of patent restricts unauthorized production and selling of such patented inventions. On the other hand, patent law, under mutually agreed terms of reward to the author of invention, that is to say, with the permission of inventor, companies and organizations are allowed produce and sell such inventions at industrial level and beneficial usage of public. One of the main objective under patent laws is “to promote disclosure of new information that will benefit society and that might otherwise go undisclosed absent the patent right.” Thus, patent system protects the ‘features and process’ that makes innovations being recognized and things work in any economic system and let the inventor to have the profit of their intellectual labor.

1. “A patent's role is to reward the
inventor. It is therefore unfair for the
Protocol questions and the doctrine of
equivalents to expand protection
beyond the literal meaning of the
claims, i.e. beyond what the inventor
has really invented.”

2. 1. Preliminary Observation:
Modern patent system emerged to protect invention(s) in science and
technology, for example, new machines, devices, chemical and technological
compositions as against the pure concepts. The term „Intellectual Property‟
is used as an umbrella term for patents, copyrights, trademarks, and other
laws. Under the English law, initially the terms was envisaged of as a „chose
in action‟ to express an „intangible property‟ in contrast of „tangible
property‟.1
Distinguished economist like Max Weber and Douglas North in
their empirical and doctrinal studies argued that the system of intellectual
property has a significant affect in the economic development of a country.
Subject to the permission of its inventor, once an invention is patented
under the relevant law, the inventor acquires an exclusive entitlement to the
usage of such invention. The law of patent restricts unauthorized production
and selling of such patented inventions. On the other hand, patent law,
under mutually agreed terms of reward to the author of invention, that is to
say, with the permission of inventor, companies and organizations are
allowed produce and sell such inventions at industrial level and beneficial
usage of public. One of the main objective under patent laws is “to promote
disclosure of new information that will benefit society and that might
otherwise go undisclosed absent the patent right.”2
Thus, patent system
protects the „features and process‟ that makes innovations being recognized
and things work in any economic system and let the inventor to have the
profit of their intellectual labor.
2. Patent System: A Historical Context in Brief
1
B. Sherman and L. Bently, The Making of Modern Intellectual Property Law (United Kingdom:
Cambridge University Press 2002) 9.
2
L A. Handley, „Refining the Graver Tank Analysis with Hypothetical Claims: A Biotechnology Exemplar‟
(LexisNexis Online) < https://litigation-
essentials.lexisnexis.com/webcd/app?action=DocumentDisplay&crawlid=1&doctype=cite&docid=5+Harv
.+J.+Law+%26+Tec+31&srctype=smi&srcid=3B15&key=9734712619b334939943c716a6e36a5f >
accessed 19 April 2011.

3. Historically, patent system is known to have begun in Italy through
promulgation of Venetian Law of 1474, which provided for formalization of
state patronage to inventions in order to confer market monopoly. In United
Kingdom first patent was granted in 1449. However, the modern patent law
has developed in response to revolutionary scientific progress and
technological changes brought by the industrial revolution. Earlier, English
monarchs used patents to reward their favorites which often resulted in
monopolies. Like charter of companies, patents were also granted through
the Act of Parliament. In 1852, patent laws were revamped to provide for
simple procedures, reduced fees. Recently, parliament in pursuant to
European Conventions has promulgated The Patent Act 1997 (as amended).
3. Criteria for Patentability and the Reward System
Modern patent system around the world provides inventor with special rights
to his/her invention, however, for a limited time period. Patents are granted
only for an „invention‟. There is no mathematical formula to judge whether
an act or method is an invention or not. Patentability is generally
determined in purview of national and international body of law and treaties.
In general, an invention is recognized as patentable, if it fulfills the legal
conditions envisaged under law prevalent laws and treaties. Further,
patentability is also granted to „substantive conditions‟ that must be fulfilled
for a patent to be granted validity. The courts have applied different tests at
different time.
The theoretical and economic underpinning of the patent‟s role and the
reward system aims to appreciate at both societal and national economic
level the intellectual/mental labor3
put by the inventor. With the advent of
modern patent reward system, a number of justifications have been
forwarded for enhancement of the patent system. Since 19th
century, two
theories have been dominating the patent system:
3
F. Machlup and E. Penrose, „The Patent Controversy‟ (1950) 10 Journal of Economic History 1, 11-17.

4. 1. Patent Reward System: the proponents of this school thought have
argued that contributions of inventors should be recognized by the grant
of a „reward‟.
2. Patent and Public Benefit: the proponents of this school of thought have
widely argued that patent grants monopoly to the corporation to foster
public benefits.
Ever since the emergence of patent system, different jurisdictions have
given different justifications to support it. One of the common goal in almost
every jurisdiction have been grant of reward as a natural right of inventor as
a fruit of their intellectual effort. It has been argued that patent reward
system provides incentives to inventors to disclose their invention which
apart from many factors results in contribution of human knowledge and
development of technological information and processes which may
otherwise have remained a secret.4
The significance and role of the patent
system was reaffirmed in UK Patent Act of 1977 and the European Patent
Convention (EPC) which highlighted importance of disclosure of inventions
for the interest of public at large and benefit national economic system
through grant of licenses.5
In general a patent granted by one country is
not enforceable in another country, unless there is some treaty, bilateral
agreement, or the invention is patent separately in others countries also.
Therefore, patent system also plays an important role in encouraging and
giving confidence to the people to invent idea and processes. For industries
patents are usually source of creation of monopolies, however, recent law
provide for a process of compulsory licensing system for industries who wish
to produce the invention of which patentability is sought.
4
D. Davies, „The Early History of the Patent Specification‟ (1934) 50 LQR 86.
5
K Seth, „History and Evolution of Patent Law-International & National Perspective‟, (Website) <
http://www.sethassociates.com/wp-content/uploads/history-and-evolution-of-patents.pdf > accessed 20
April 2011.

5. Upshot, “the theory upon which the patent system is based is that the
opportunity of acquiring exclusive rights in an invention stimulates technical
progress in four ways; first is that in encourages research and invention;
second, that it induces the inventor to disclose his discoveries instead of
keeping them a trade secret; third, that it offers a reward for the expenses
of developing inventions to the stage at which they are commercially
practicable and fourth, that it provides an inducement to invest capital in
new lines of production which might not appear profitable if many
competing producers embarked on them simultaneously.”6
4. Protocol Questions and Doctrine of Equivalents: Limits of the Claims
Patent system is regulated through various laws, conventions and treaties.
The basic purpose of these legal and regulatory regimes is to protect the
rights of the inventors and open the invention for public purposes. Earlier,
the process of registration of patent required only some regulatory
registration requirement without examining idea and invention itself. With
the inception of modern technology, many countries at national level, and
international law have entered into a regime which provides a complex
process of specification to ensure patentability of the invention. In United
States, Holland, Japan and Germany, in depth examination is performed to
scrutinize the ingredients of innovation and obviousness. Whereas, in
English and most of the common law jurisdiction, which were earlier
colonies of British Empire follow a process which is less rigorous.
UK courts have most of the times interpreted and constructed patent law in
a literal and a straight forward manner. The reform bill of 1852 suggested
certain changes following the system of examination employed in the US.
But this was not accepted by the House of Common and such changes were
not incorporated in the final version. The patent law promulgated in 1852
brought up certain sophisticated changes in comparison to earlier system of
6
Ayyangar‟s Report (1959) Para 17 quoted from Swan Committee‟s Report

6. grant of patents. Later, in 1883, comparatively simpler procedures were
introduced. The new law provided for a system of patent specification and
acquisition of compulsory licensing by the organizations to produce the
invention at commercial level. This law also enabled interested parties to file
application before the court to challenge patentability of the invention.
Further, it provided for compulsory examination of patentability of the
invention. However, this examination system was limited to comply with the
requirement that the invention was properly described and patentable.
In 1902, the Patent System of England provided for an extra examination of
innovation or novelty of the invention brought for patentability. This test is a
basic feature of American patent system employed since 18th
century. The
American Patent System went through a series of reforms in 19th
century.
This made the system more and more sophisticated and advantageous to
secure one‟s property rights. The US law provided for a separate
department to handle with the matters regarding patentability of an
invention. For a decade US Supreme Court has affirmed the doctrine of
„flash of genius‟ to establish patentability. The test was formulated in Cuno
Engineering v Automatic Devices7
which held that “the new device, however
useful it may be, must reveal the flash of creative genius, not merely the
skill of the calling. If it fails, it has not established its right to a private grant
on the public domain”. In other words, an invention must be a result of an
invention in the mind of a person in a „flash of genius‟ and not as an act of
tinkering. The test provided an easy to establish mechanism to judges and
juror to determine whether or not any given patent which is beyond
scientific acumen is an invention or not. However, with the enactment of
Patent Act of 1952, the test was flash of genius was opted out. The new Act
under section 103 provided a standard of non-obviousness as “patentability
shall not be negatived by the manner in which invention was made.”8
Thus,
7
(1941) 314 US 84
8
Ibid

7. in US an inventor or organization in order to secure patent rights need to
establish the non-obviousness, whereas, in Europe and United Kingdom an
inventive step is the basic test for an act or idea or process to declare as
patentable. However, determination of inventive step varies from country to
country.
The UK Courts, now a day, adhere to the principles for the assessment as
laid down by the Court of Appeal in Wind Surfing International, Inc case9
.
These principles are as follows:
1. Identification of the Inventive Concept embodies in the patent,
2. Imputing to a normally skilled but unimaginative addressee what was
common general knowledge in art at the priority date,
3. Identification of the differences between alleged invention and the
matter cited for, and
4. Decision as to whether those differences, relevant knowledge, and
comprise features which would have been obvious to the skilled person
with a degree of invention.
In 2007, the UK Court of Appeal in Pozzoli Spa case10
has a bit revoked the
test outlined in Windsurfing case cited above. The Court of Appeal has
enshrined the following principles for recognition of an inventive step.
1. (a) identification of notional person skilled in art, (b) identification of
relevant common knowledge or such person,
2. Identification of the novelty of concept of the claim in question, and if
identification cannot be done than to construe it from the relevant
information,
3. Identification of what, if any, difference exists between the substance
cited as formulation of „state of art‟ and inventive step in the claim, or
the claim as construed, and
9
Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59
10
Pozzali Spa v BDMO SA & Anor [2007] EWCA Civ 588

8. 4. Identification of the differences which have been obvious to a person
skilled in the relevant art, and do it requires any degree of invention.
Thus test of non-obviousness and inventive step is more or less same
applied in most of the common law jurisdictions. Further, in scope of patent
claims comes the doctrine of Equivalents as a legal concept that enables
country courts to hold a person or a corporation liable for infringement of
patent rights regarding several parts of the patent. So there are many forms
of infringement of patent rights. The test of determination of Equivalency by
the Supreme Court of United Stated provides for a bit simple test in
comparison to other jurisdictions. It provides that “If two devices do the same
work in substantially the same way, and accomplish substantially the same result, they
are the same, even though they differ in name, form, or shape”11
.
The main purpose of the doctrine of equivalents is to avoid fraudulent
representations as to invention. However, in practical, there arise many
situations in which application of the above-said principle becomes quite
difficult. When equivalency of a patent is under question, it is important to
know whether the patent is pioneer and cause of whole new arena in
substance or merely an innovative improvement to existing regime. Of
course, a pioneering patent is given much broader interpretation and more
equivalents, whereas, second one is given a narrow interpretation. Thus in
US the scope of a claim of patent rights can extend beyond the literal
interpretation of the claim. The doctrine protects patent rights from
“copyrights who to seeks avoid infringement of patents by making minor,
insubstantial changes to a patented invention.”12
Since the inception of
equivalency test, the patented invention‟s scope is defined by the claim
made in its application and usage.
11
Machine Company v Murphy, (1877) 97 US 120
12
Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co., [2002] 535 U.S. 722, 732

9. In UK “Improver”13
case provides an apt description of doctrine of
Equivalents. Justice Hoffman suggested whether the variant embarrass
material effect on how the invention works? If yes, the variant does not fall
within the ambit of claim, if no—than the question is:
1. Was the variant (with no material effect upon invention) ostensible,
when published to the reader skilled in that particular art?
2. Would the person skilled in that particular art have understood the
language of claim made by the person or organization holding patent
rights of the invention?14
Regarding first question, the Court held that use of the alleged chemical did
not impact materially on the way the invention has been intended to work,
even though there has been sufficient evidence that it causes improve side
effects on treatment. Regarding, second question, the Court held that it was
not obvious that the alleged chemical would have no material effect. The
use of alleged chemical fell outside the claim of patentee and there is not
infringement of the rights of patent holder.
Jacob LJ in Kirin-Amgen Inc case observed that “There is no presumption
about the width of the claims. A patent may, for one reason or another,
claim less than it teaches or enables. "Purposive construction" does not
mean that one is extending or going beyond the definition of the technical
matter for which the patentee seeks protection in the claims. The question is
always what the person skilled in the art would have understood the
patentee to be using the language of the claim to mean. And for this
purpose, the language he has chosen is usually of critical importance.”15
13
Improver Corporation v Remington Consumer Product Limited [1990] FSR 181
14
P. Treloar, „Australia Follows UK on Doctrine of Equivalents‟. (The Global IP Resource, Managing
Intellectual Property Website) < http://www.managingip.com/Article/1254758/Australia-follows-UK-on-
doctrine-of-equivalents.html > accessed 20 April 2011.
15
Waner-Jenkinson Co v Hilton Davis Chemical Co 520 US 17, 28-29 (1997)

10. Thus the court established a bit harsh criterion to extend the protection
beyond the literal meaning of the claims, that is to say, beyond what the
inventor has really invented and holds patent rights. This criterion provides
a bit clear criterion for professionals to access in assessing infringement
claim. However, it also opens a possibility to escape liability merely on the
ground of non-obviousness and non-literal interpretation of the claim.
In view of above discussion, it is observed that one of the main reasons of
incoherence of the patent law around the world is also the implications of
doctrine of equivalents. The main protocol questions in clash with the
principles of equivalency are “requirement for clarity of notice and provisions
for reissue of defect patents”.16
In Waner-Jenkinson Co case, the US
Supreme Court has also expressed its anxiety that the doctrine of equivalent
had “taken on a life of its own, unbounded by the patent claims.” 17
Thus the
American courts are also on a way to restrict the “the scope of the doctrine
by what is called prosecution history or file wrapper estoppel, by which
equivalence cannot be claimed for integers restricting the monopoly which
have been included by amendment during the prosecution of the application
in the patent office.”18
It is thus argued that doctrine of equivalence cannot
be applied similarly on all patents and areas of knowledge. However, judge-
made common law seems a bit rationale and could provide for rights and
liabilities in contrast to statutory amendments.
5. Conclusion
In view of above, it can be concluded that a quintessential standard of
patent system is that a patent is granted only when an invention is made
and it is useful for public purpose and can be produced at industrial level.
16
MC. Philips, „Taking a Step Beyond Maxwell to Tame the Doctrine of Equivalents‟ (LexisNexis Online) <
https://litigation-
essentials.lexisnexis.com/webcd/app?action=DocumentDisplay&crawlid=1&doctype=cite&docid=11+For
dham+Intell.+Prop.+Media+%26+Ent.+L.J.+155&srctype=smi&srcid=3B15&key=7241d431d09fcef4f9c
710960cfcfa25> accessed 19 April 2011.
17
Waner-Jenkinson Co v Hilton Davis Chemical Co [1997] 520 US 17, 28-29
18
Kirin-Amgen Inc v Hoechst Marion Roussel [2004] (HL) 46

11. Further, in recent legislative instruments and international convention and
treaties, much consideration is given to the fact whether such an invention
would be hazardous to public health, or the purpose for which it is invented.
Despite the fact that a number of treaties and convention have been
streamlined to avoid infringement of copyrights, most of the countries still
employ their national laws in determination of controversies which
necessitates harmonization of patent law. The foremost reason is that the
businesses today operate internationally and it is cumbersome to seek
protection of patent rights in multiple jurisdictions. Regarding, position of
doctrine of equivalency in UK and US, it is found that the position under UK
law is a bit restrictive and the same is practiced in most of the common law
jurisdictions. There is a need of working out the harmonization and
integration of international agreements and statutory amendments for
interpretation and scope of the claim.

12. Bibliography:
Books and Articles
1. B. Sherman and L. Bently, The Making of Modern Intellectual Property Law
(United Kingdom: Cambridge University Press 2002).
2. F. Machlup and E. Penrose, „The Patent Controversy‟ (1950) 10 Journal of
Economic History 1, 11-17.
3. D. Davies, „The Early History of the Patent Specification‟ (1934) 50 LQR 86.
4. K Seth, „History and Evolution of Patent Law-International & National
Perspective‟, (Website) < http://www.sethassociates.com/wp-
content/uploads/history-and-evolution-of-patents.pdf > accessed 20 April
2011.
5. L A. Handley, „Refining the Graver Tank Analysis with Hypothetical Claims: A
Biotechnology Exemplar‟ (LexisNexis Online) < https://litigation-
essentials.lexisnexis.com/webcd/app?action=DocumentDisplay&crawlid=1&d
octype=cite&docid=5+Harv.+J.+Law+%26+Tec+31&srctype=smi&srcid=3B
15&key=9734712619b334939943c716a6e36a5f > accessed 19 April 2011.
6. P. Treloar, „Australia Follows UK on Doctrine of Equivalents‟. (The Global IP
Resource, Managing Intellectual Property Website) <
http://www.managingip.com/Article/1254758/Australia-follows-UK-on-
doctrine-of-equivalents.html > accessed 20 April 2011.
7. MC. Philips, „Taking a Step Beyond Maxwell to Tame the Doctrine of
Equivalents‟ (LexisNexis Online) < https://litigation-
essentials.lexisnexis.com/webcd/app?action=DocumentDisplay&crawlid=1&d
octype=cite&docid=11+Fordham+Intell.+Prop.+Media+%26+Ent.+L.J.+15
5&srctype=smi&srcid=3B15&key=7241d431d09fcef4f9c710960cfcfa25>
accessed 19 April 2011.
Case Laws:
8. Ayyangar‟s Report (1959) Para 17 quoted from Swan Committee‟s Report
9. Cuno Engineering v Automatic Devices (1941) 314 US 84

13. 10.Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co., [2002] 535 U.S. 722,
732
11.Improver Corporation v Remington Consumer Product Limited [1990] FSR
181
12.Kirin-Amgen Inc v Hoechst Marion Roussel [2004] (HCL) 46.
13.Machine Company v Murphy, (1877) 97 US 120
14.Pozzali Spa v BDMO SA & Anor [2007] EWCA Civ 588
15.Waner-Jenkinson Co v Hilton Davis Chemical Co 520 US 17, 28-29 (1997)
16.Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59