Leão Barcellos, Milton Lucídio --- "Patent claim interpretation and new technologies: re-thinking the problem/solution approach" [2018] ELECD 1143; in Pistorius, Tana (ed), "Intellectual Property Perspectives on the Regulation of New Technologies" (Edward Elgar Publishing, 2018) 93

Book Title: Intellectual Property Perspectives on the Regulation of New Technologies

Editor(s): Pistorius, Tana

Publisher: Edward Elgar Publishing

ISBN: 9781786436375

Section: Chapter 4

Section Title: Patent claim interpretation and new technologies: re-thinking the problem/solution approach

Author(s): Leão Barcellos, Milton Lucídio

Number of pages: 15

Abstract/Description:

This chapter addresses the challenges that new technologies pose to patent claim interpretation. According to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), a full disclosure of the technology is mandatory in order to obtain patent protection. At the same time, the claim construction techniques are often based on broad protection and on what the competitors would do to avoid infringement in the marketplace, and not only on the disclosure invention itself. The chapter explores patent claim interpretation using the problem/solution approach as a way to help understand the scope of protection of the new technologies. The equality principle as a route to understand the scope of patent protection (based on the differences in the multiple and always challenging new technologies in the different technology fields) supports the problem/solution approach to patent claim interpretation techniques related to new technologies.