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Claims narrowed during examination to avoid prior art and other patent-ability issues are not entitled to the doctrine of equivalents in the United States. However, the USPTO has recently been rolling out their pro-se program in which they assist pro-se applicants to varying degrees.

The first patent I wrote myself has published; the examination process for it was very formal in which the examiner issued rejections and allowances with helpful commentary suggesting how to overcome any given issue. My most recent pro-se application, however, did not undergo this formal process; instead, the examiner rewrote various claims without issuing any sort of rejections and sent the reworked patent to me for my acceptance/rejection.

I have to wonder what impact this will have on the doctrine of equivalents. It probably will require judicial interpretation but I wonder if anyone had strong opinions or a definitive answer.

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  • I’m curious. To my knowledge there is no such thing as an office action that is not either an allowance or a rejection/objection. In what form was the informal communication to you?
    – George White ♦
    Feb 22 '20 at 22:10
  • My sloppy terminology. I suppose an office action contains rejections/allowances/etc? I think my terminology above is broad enough? How would you modify what I wrote?
    – Jordan McBain
    Feb 22 '20 at 22:14
  • You did clearly say on your current application you did not get any objection or rejections. I just have never heard of a process for that
    – George White ♦
    Feb 22 '20 at 22:49
  • Oh I see. I believe that the absence of any assertions of allowing or rejecting a claim was as a result of the pro se program. The examiner just reworded some claims and sent the reworded document to me for my approval. The lack of any such assertion may have been due to the fact that all of my claims were allowed but that's a guess.
    – Jordan McBain
    Feb 22 '20 at 22:52
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There is almost no application of the doctrine of equivalents any more so there is nothing valuable too lose, in current practice.

See https://patentlyo.com/patent/2019/05/doctrine-equivalents-exceptional.html

“ The doctrine of equivalents applies only in exceptional cases and is not “simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims.” Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1362 (Fed. Cir. 2019) (“[T]he doctrine of equivalents cannot be used to effectively read out a claim limitation . . . because the public has a right to rely on the language of patent claims.” )“ The amendments the examiner drafted will be viewed as your amendments if entered. A warning - examiners are trained to find holes in claims, not to draft them. And particularly not to draft them to the applicant’s benefit.

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  • Thanks for sharing your perspective. It is quite a strong assertion to say "there is almost no application of the doctrine of equivalents any more." My understanding was that it would apply if the claim remained in tact through examination. Could you elaborate on this statement?
    – Jordan McBain
    Feb 22 '20 at 21:05
  • Thanks again. That quote certainly spells out definitively. Sound motivation for writing the most broad claims possible.
    – Jordan McBain
    Feb 22 '20 at 22:12

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