Background
The Festo decision was a threat to the US doctrine of
equivalents, or DOE. This doctrine has been relied upon for years
by patent owners to stop copycat products that use technology
similar to their original. Basically, the doctrine says that if a
product or process is not substantially different from the elements
of a patented invention, it is considered to be infringing.
Festo Corporation is a robotics company in Long Island, New
York. It challenged a Japanese rival, Shoketsu Kinzoku Koygo
Kabushiki, alleging patent infringement. The federal court ruled
that there was no infringement. Significantly, it added that Festo
lost certain rights in its technology as soon as it narrowed its
original claim for a patent.
Until the Festo case, elements of an invention stripped from a
patent claim during amendment were still considered the property of
the inventor under US law, even if they did not appear in the
formal patent description. Very few US patent applications succeed
without some degree of amendment, so the decision in November 2000
made inventors nervous. It threatened to render thousands of
patents worthless.
However, the Supreme Court yesterday limited the scope of that
decision in a unanimous ruling.
The new ruling
Justice Anthony Kennedy’s opinion, released yesterday, said that
amending patent claims does not automatically strip patent-holders
of equivalence protection. However, the opinion adds that amending
a patent claim does create a presumption that the amendment was
intended to narrow the claim. If that presumption is not rebutted,
the protection of the equivalents doctrine will fall.
Kennedy explained that a patent owner could rebut the
presumption by claiming that the amendment involved a feature that
was “unforeseeable at the time of the application” or “for some
other reason” could not be included in the original claim.
What does it mean?
According to American Lawyer Media, US patent experts consider
that the ruling puts new burdens on those applying for patents “to
justify amendments in ways that won’t leave their claims vulnerable
to attack.”
The journal quotes Gregory Castanias of US firm Jones Day Reavis
& Pogue who points out that the Festo decision was “tweaked,”
not reversed. Instead of an absolute ban on the doctrine of
equivalents, there is now a presumption that “will be difficult to
overcome, except perhaps in areas of technology where growth is
fast and advancements not easily foreseen.”
As regards the circumstances of the original Festo dispute, the
Federal Court has been ordered to reconsider the matter in light of
its ruling.
