Is prosecution history estoppel an affirmative defense?

In cases in which the patent holder claims indirect infringement under the doctrine of equivalents, the defendant may raise prosecution history estoppel as an affirmative defense to block the infringement claims.

What is the prosecution history of a patent?

A patent or patent application’s (patent document) prosecution file history is the official US Patent and Trademark Office (USPTO) record containing the original application, the pre- and post-issuance amendments and correspondence between the applicant and the USPTO, and USPTO internal processing and tracking …

What are the reasons for the doctrine of equivalents and prosecution history estoppel?

A prosecution history may limit a range of infringement available under the doctrine of equivalents. Prosecution history estoppel prevents a patentee from using the doctrine of equivalents to recapture subject matter surrendered during prosecution from the literal scope of a claim.

What is file wrapper estoppel?

Prosecution history estoppel, also known as file-wrapper estoppel, is a term used to indicate that a person who has filed a patent application, and then makes narrowing amendments to the application to accommodate the patent law, may be precluded from invoking the doctrine of equivalents to broaden the scope of their …

How do you prosecute a patent?

Instead of filing an appeal, you can request continued prosecution of the patent application by the patent examiner. This option requires you to submit a request for continued examination and your response to the final action from the USPTO.

What does the doctrine of equivalents do?

The doctrine of equivalents is a legal rule in patent law whereby a party can be liable for infringement even though the party does not literally or precisely infringe every limitation of a patent claim.

What is a file wrapper?

Legal Definition of file wrapper : a written record in a patent office of the application and negotiations for a patent preceding the issuance of the patent — see also file wrapper estoppel at estoppel sense 1.

What is equitable estoppel in law?

equitable estoppel. n. where a court will not grant a judgment or other legal relief to a party who has not acted fairly; for example, by having made false representations or concealing material facts from the other party.

Who can prosecute a patent?

An applicant who is a juristic entity must be represented by a patent practitioner. An applicant for patent, other than a juristic entity (e.g., organizational assignee), may file and prosecute his or her own application, and thus act as his or her own representative (pro se) before the Office. See 37 CFR 1.31.