Netherlands Adopts Patent Prosecution History Estoppel. Is Prosecution Disclaimer Coming Next?
On December 22, 2006 the Dutch Supreme Court ruled in the case Dijkstra vs. Saier that the patent prosecution file history may be invoked to prevent the patentee disclaiming an aspect of his patent monopoly in order to get a patent granted, but then reclaiming it during infringement proceedings. . . . This prevents a proprietor who has narrowed his claims during prosecution in order to meet requirements of patentability from then asserting the patent against any equivalent technologies falling within the scope of a surrendered territory.
Professor Wegner has noted that the Dutch are apparantly "departing from their brethren in Germany and the United Kingdom that deny the use of prosecution history to preclude application of the doctrine of equivalents." However, "at least insofar as the analysis in IPEG is concerned, the holding in Dijkstra vs. Saier does not extend to “prosecution disclaimer” under American law concerning the literal scope of protection:"
It is the American use of prosecution history to determine the literal limits of protection that has created much of the uncertainty in American claim construction and which is so
pointedly criticized by British critics even in their judicial opinions even by a member of the House of Lords, Lord Leonard Hoffmann, and the Court of Appeal, Lord Justice Robin Jacob.
American “prosecution disclaimer” has been an evolving doctrine that started from an unsupported statement by the late Giles Sutherland Rich in a mid-1980’s opinion that finds no Supreme Court case law foundation cited by Judge Rich. It is now eight years since Professor Thomas explained the wisdom
of denying prosecution history a status in post-patenting claim
interpretation and infringement analysis. See John R. Thomas, On Preparatory Texts and Proprietary Technologies: The Place of Prosecution Histories in Patent Claim Interpretation, 47 UCLA L. Rev. 183 (1999). Nowhere in any of the opinions
of the Federal Circuit is there any citation of Prof. Thomas’ important work. Nowhere is there any appreciation of his arguments or any indication that his work has even been read by anyone on the Federal Circuit (at least insofar as is reflected in any of the court's opinions).