In the U.S., a prosecution history of a patent comes into play in the context of claim construction, and also in the context of an assessment of infringement under the doctrine of equivalents.
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In the U.S., a prosecution history of a patent (i.e., the
proceedings between the patent applicant and the USPTO from
application filing to patent issuance) comes into play in the
context of claim construction (for example, before a district
court, before the PTAB in a post-grant proceeding, or in the eyes
of a third party analyzing the patent for freedom to operate
reasons), and also in the context of an assessment of infringement
under the doctrine of equivalents. The Federal Circuit has
Monday, May 10, 2021
In the U.S., a prosecution history of a patent (i.e., the proceedings between the patent applicant and the USPTO from application filing to patent issuance) comes into play in the context of claim construction (for example, before a district court, before the PTAB in a post-grant proceeding, or in the eyes of a third party analyzing the patent for freedom to operate reasons), and also in the context of an assessment of infringement under the doctrine of equivalents. The Federal Circuit has recognized distinct roles of the prosecution history in claim construction and infringement under the doctrine of equivalents: