XYZ Corp. filed an administrative complaint for patent infringement against ABC Company. XYZ Corp. was the patentee of Philippine Patent No. I-12345, which boasts of the innovative step of curing ham by exposing it to a filtered smoke cooled in a cooling unit between 10° and 12°C while retaining ingredients exerting highly preservative and sterilizing effects. ABC Company employs a similar method, the only difference being that it cools down its filtered smoke between 20° and 24°C instead of 10° and 12°C. ABC Company maintained that it is not guilty of infringing Patent No. I-12345 because its process is not exactly the same as XYZ Corp.’s. XYZ Corp. countered, however, that infringement was committed because ABC Company’s process performs substantially the same function and achieves substantially the same result as its own. Decide with reason(s).
Suggested answer only. Not an official answer and not legal advice.
No, ABC Company is not guilty of patent infringement.
Under Section 75 of the IP Code and jurisprudence, patent infringement occurs through literal infringement or the doctrine of equivalents. Literal infringement requires exact identity of all material elements. The doctrine of equivalents requires satisfying the function-means-and-result test, showing that the accused process performs substantially the same function, in substantially the same way, to produce the same result.
Here, literal infringement is absent because ABC Company cools smoke between 20° and 24°C, lacking exact identity with XYZ Corp.'s claim of 10° to 12°C. Equivalency infringement also fails because XYZ Corp. failed to prove that ABC Company's process operates in substantially the same way. Under prevailing jurisprudence, identity of result alone does not constitute patent infringement.
Therefore, ABC Company is not liable for patent infringement.
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Quick check
Under Section 75 of the Intellectual Property Code (R.A. No. 8293), how is the scope of protection conferred by a patent determined?
The scope of patent protection is determined strictly by the terms of the claims, interpreted in light of the description and drawings.
What is required to prove literal patent infringement under Philippine intellectual property law?
Literal infringement requires exact identity of every material element specified in the patent claim.
Under the doctrine of equivalents, what three elements must be established under the function-means-and-result test?
The doctrine of equivalents requires proving that the accused process performs substantially the same function, in substantially the same way, to produce substantially the same result.
Why does achieving the same commercial result alone fail to establish patent infringement under the doctrine of equivalents?
Identity of result alone does not constitute infringement under the doctrine of equivalents without proof that the accused process operates in substantially the same way.
A patent claims a ham-curing process by cooling smoke between 10° and 12°C. An accused company cools smoke between 20° and 24°C. Why is there no patent infringement?
Infringement fails because the temperature difference prevents literal identity and the patentee failed to prove that the process operates in substantially the same way.
Learn more about these topics
1. Literal Infringement
Under Section 75 of the Intellectual Property Code, literal infringement occurs when an accused product or process falls clearly and exactly within the literal language of the patent claims. Every material element specified in the patent claim must be present in the alleged infringing device or method. If an essential element or numerical limitation claimed in the patent is altered, substituted, or missing in the accused process, literal infringement does not lie. Courts adhere strictly to the patent claims to determine literal identity.
2. Doctrine of Equivalents
The doctrine of equivalents prevents an infringer from evading liability through minor or colorable variations of a patented invention. Under Philippine law, applying this doctrine requires satisfying the function-means-and-result test. The patentee must prove that the accused process performs substantially the same function, in substantially the same way, to achieve substantially the same result. Proving merely that two processes yield the same result is insufficient without establishing that they operate in substantially the same manner.
3. Function-Means-Result Test
The function-means-and-result test requires a triple identity to establish patent infringement under the doctrine of equivalents. The patentee bears the burden of showing substantial identity in function, means, and result between the patented invention and the accused process. When the accused process utilizes a substantially different method or operating condition—such as a distinct temperature range—the element of means is not satisfied. Consequently, achieving a similar end result alone will not sustain a claim of equivalency infringement.