Festo: What Every Inventor Should Know About This Important Supreme Court Case

by | May 1, 2002 | POLITICS

The Festo case currently before the Supreme Court could have a significant impact on strategies for protecting inventors’ intellectual property rights. If the Supreme Court upholds the lower court ruling, the protection given to millions of patented inventions will be weakened. If an inventor’s patent agent or patent attorney doesn’t adapt to the new law, […]

The Festo case currently before the Supreme Court could have a significant impact on strategies for protecting inventors’ intellectual property rights. If the Supreme Court upholds the lower court ruling, the protection given to millions of patented inventions will be weakened. If an inventor’s patent agent or patent attorney doesn’t adapt to the new law, the inventor may find that he or she has spent thousands of dollars to obtain an unenforceable patent.

In Festo, the Supreme Court is basically deciding what protections are available for patents that are amended during prosecution. Frequently, during prosecution of a patent, amendments are made that narrow the scope of the claims. Sometimes this is done to comply with purely formal requirements. Other times, it is done to avoid prior art.

Prior art is typically another patent that existed before the applicant’s patent application was filed. For example, if a claim in the patent application is for a table made of four legs attached to a flat surface, a patent for a table made of four legs attached to a flat surface by nails is prior art. Since the applicant’s claim is broad enough to cover the prior art, the claim would be rejected. You can’t get a patent that’s so broad that prior art would be considered to infringe it. Thus, to make sure the claim doesn’t cover the prior art, the applicant might amend it to be a table made of four legs attached to a flat surface by glue. Therefore, the table with nails wouldn’t infringe.

But, what about a table where the legs are attached by screws? Or by paste? Under the old rule, the table with screws would probably not infringe because screws are more like nails than they are like glue. However, the table held together by paste could be determined to be equivalent to the patented invention, and thus infringe even though it doesn’t literally infringe. As you probably guessed, there are lawyers who make careers arguing over whether two inventions are equivalent or not. However for over a hundred years, this equivalence doctrine protected inventors who accidentally surrendered more ground than they intended when they amended their claims.

The lower court changed all that. It essentially said that whenever an amendment narrows the scope of the claims for any reason (even merely formal reasons), only literal infringement is available to an inventor. Most patents are narrowed by amendment during prosecution, so if the Supreme Court upholds the lower court ruling, millions of issued patents will no longer offer the same broad protection that they did when they issued.

If you own a patent or are planning to file for a patent, all is not lost even if the Supreme Court upholds the lower court. If you are clever, you can still obtain the same protection you would have before the rule change. To do so, you should strongly consider doing one or more of the following:

1. File all patents in the United States before pursuing protection in other countries or completely re-write foreign filings with U.S. standards in mind before filing with the Patent Office. Foreign countries have different standards and forms for patent applications; and typically, U.S. patents based on foreign filings are simple translations of the foreign patents. This leads to amendments to clarify meaning where the translation was lacking or to make the claims comport with U.S. claim drafting standards. If any of those amendments are found to be narrowing the inventor will be limited to literal infringement.

2. Perform a Novelty Search. Frequently, an expert in a field saves money by not performing a novelty search before filing a patent application. This small initial financial savings could cost an inventor dearly. Since any limiting amendment to avoid a prior art rejection will limit the inventor to literal infringement, it is desirable to find all the prior art a novelty search can turn up and tailor the claims to avoid the prior art before the application is filed.

3. Resist Making Any Amendment. Before the new rule, the inventor and examiner had a relatively non-adversarial relationship. Inventors freely amended to correct formal deficiencies or to distinguish the invention when facing prior art rejections because equivalent inventions would still infringe. Now, inventors should resist making any amendment because it may be found to be narrowing. Inventors should argue against the need for amendment and appeal any adverse decision of the examiner through the Patent Office and the courts, if necessary, to avoid amending any claims.

4. Perform a Mock Prosecution. Just as mock trials are used to prepare for important cases, a mock prosecution of the application should now be performed for important patent applications. Before the application is filed with the Patent Office, it should be reviewed by a mock examiner. The mock examiner will examine the application and issue rejections, just like the Patent Office. The difference is, when the application is amended to overcome these rejections, equivalent inventions will still infringe.

5. Keep an Unissued Continuation Alive. If a narrowing amendment was made, the inventor should keep a continuation of that application alive before the Patent Office indefinitely. As claims are allowed, a continuation with new claims should be filed. Then, a claim can be added that an accused item would literally infringe. If that claim issues, the inventor will be able to sue the infringer and win.

6. Keep Invention a Trade Secret. Another option is available for inventors to protect their inventions: keep inventions trade secrets. The protection available for trade secrets is considerably less than the protection for patents; but if a patent would be worthless with only literal enforcement and the inventor lacks the resources to achieve satisfactory odds of getting the claims to issue without a narrowing amendment or to keep a continuation alive before the Patent Office indefinitely, the inventor may be better off not applying for patent protection.

7. File a broadening reissue for any patent you own that issued less than two years ago. Up to two years after a patent issues, you can file a broadening reissue, which allows you to broaden the scope of the claims in the issued patent to the extent allowable. Then, you can keep a continuation alive before the Patent Office indefinitely (see #5).

8. Make sure your Patent Attorney or Patent Agent is familiar with the Festo case. The Supreme Court may not simply uphold the lower court’s ruling. It might overturn the ruling, expand the ruling or even send it back to the lower court without addressing the ruling. What you should do in each of these situations will depend heavily on what the court says when it acts. Therefor, it’s vitally important that your patent agent or attorney be familiar with this case so that he or she can give you sound advice the same day that the Supreme Court’s decision comes out. This is the most important patent case in years, so if you ask your agent or attorney to explain the Festo case to you over the phone and he or she is unable to immediately do so, you may want to consider looking for better, more knowledgeable representation elsewhere.

MacLane C. Key is a patent agent with a multi-national law firm. He specializes in software, hardware, communications and mechanical patents. He can be reached at mkey@coudert.com. The views expressed within are those of the author, and may not be those o

The views expressed above represent those of the author and do not necessarily represent the views of the editors and publishers of Capitalism Magazine. Capitalism Magazine sometimes publishes articles we disagree with because we think the article provides information, or a contrasting point of view, that may be of value to our readers.

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