A provision on this issue may be based on the following option:
a) The scope of protection of a patent shall be determined on the basis of the statements of the patent claim(s). Protection shall not encompass subject matter that is disclosed but not claimed in the patent.
b) An element outside the wording of a claim may be deemed covered by a claim if, for a person skilled in the art it was obvious, at the time of the application, that said element could achieve the same result as that achieved by the element expressed in the claim, unless such person would have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention.
c) The simple fact that an equivalent effect may be achieved shall not be deemed as evidence of infringement.
The proposed text defines, first, the limits of the granted protection. Any matter merely disclosed in the patent document but not specifically claimed would not be covered151. Second, it defines when equivalence is deemed to exist, based on an examination of the obviousness of a variant to the invention, at the time of the application. Following some case law, it is also suggested that the doctrine of equivalence would not apply when strict compliance with the wording of the claims was intended by the patentee.
151 This limitation has been expressly adopted by a Federal Court in the United States in Maxwell vs. J. Baker Inc. (1996).
Third, the proposed text clarifies that the existence of an equivalent effect does not lead to a presumption of infringement. A finding of infringement would be triggered instead by a showing of equivalence with regard to the elements of the invention.
It should be noted that the time at which the obviousness of the variants is judged may lead to different results. The later variants are compared to inventions, the more likely they will appear obvious and therefore be judged an infringement of patented inventions. Variants compared to inventions at the date of the application (as done in some jurisdictions), are less likely to be considered “equivalent” than those considered at the time of invention.