The modern era is marked by a constant stream of technological innovations and advancements. While these developments drive progress, they also increase the likelihood of patent-related conflicts and infringements. Such infringements can take many forms and are not always obvious; in some cases, they involve slight modifications that may appear legally distinct but still exploit the essence of a patented invention. This is exactly the issue that the doctrine of equivalents aims to prevent.
The doctrine of equivalents is a legal principle in patent law that allows a patent holder to claim infringement even when the accused product or process does not fall within the literal scope of the patent’s claims but is equivalent to the patented invention. This doctrine essentially expands the scope of patent protection to prevent infringers from making minor changes strictly to avoid liability.
The principle reflects the idea that patent rights in Indonesia and globally should extend to inventions that perform the same function in a substantially similar way, even if the specific language of the claims does not describe the accused product or process.
Graver Tank & Manufacturing Co. vs. Linde Air Products Co. (1950)
The most famous case that underlines the doctrine of equivalents involves two American manufacturing companies. The plaintiff, Linde Air Products Co., owned a patent for an electric welding process and sued Graver for patent infringement. Graver argued that they had not infringed, as they used manganese for their welding composition, while the patent used magnesium—a different but similar material.
Ultimately, the United States district court found infringement, and the Court of Appeals affirmed the claim. The court noted that allowing others to use the same process with only minor, obvious modifications—such as substituting a similar material—would undermine the patent holder’s exclusive rights and discourage innovation, contradicting the very policy that Intellectual Property law in Indonesia and elsewhere aims to uphold.
This case also introduced two core tests for equivalency:
Function-Way-Result (FWR) Test:
- Function – Does the accused product perform substantially the same function?
- Way – Does it operate in substantially the same way?
- Result – Does it achieve the same or similar result?
Insubstantial Differences Test:
This test assesses whether the differences between the accused product and the patented claim are minor or substantial enough to avoid infringement.
Doctrine of Equivalents in Indonesia
The doctrine of equivalences is not specifically mentioned in Law No 13 Year 2016 on Patents and the Indonesian patent regimes. However, the essential idea of the doctrine is expressed Article 21 of Basic Proposal for a Treaty Supplementing the Paris Convention which says the following:
“2. (a) a claim shall be considered to cover not only all the elements as expressed in the claim but also equivalents.
(b) An element (‘the equivalent element’) shall generally be considered as being equivalent to an element as expressed in a claim if, at the time of any alleged infringement, either of the following conditions is fulfilled in regard to the invention as claimed:
(i) the equivalent element performs substantially the same function in substantially the same way and produces substantially the same result as the element as expressed in the claim, or
(ii) it is obvious to a person skilled in the art that the same result as that achieved by means of the element as expressed in the claim can be achieved by means of the equivalent element.”
This article stipulates that the scope of claims should include an element that is considered equivalent to a claimed element that performs the same function in the same way to achieve the same result, or (ii) it is obvious to a skilled person that the same result could be achieved using the substitute element—therefore this article essentially upholds the doctrine of equivalence. As members of the Paris convention, Indonesia is obliged to the treaty and the article above.
Why This Matters for IP Owners and Practitioners
The doctrine of equivalents further underlines the importance of understanding the full scope of patent protection—not only to defend your own patents effectively but also to avoid inadvertently infringing on the rights of others. If you are seeking a Patent Law Firm in Indonesia, or need assistance with Indonesia patent search, Indonesia trademark registration, or copyright infringement issues in Indonesia, consulting with a trusted Indonesia IP consultant is essential.
As a reputable IP law firm in Indonesia, we at Am Badar & Am Badar provide legal expertise in:
- Indonesia trademark litigation
- Indonesia copyright law
- Patent and trademark prosecution
- Representation by experienced litigation lawyers in Jakarta, Indonesia
For further inquiries related to Intellectual Property in Indonesia, don’t hesitate to contact us at ambadar@ambadar.co.id.
Written and Reviewed by Nabil Argya
