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Issue 20 | May 28, 2002
Festo - Supreme Court Opinion
 The Supreme Court today handed down its opinion in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. a/k/a SMC Corp. (SMC), Case No. 00-1543. The decision reversed the Federal Circuit's en banc holding that amendments to patent claims, made in order to gain allowance by the Patent and Trademark Office, automatically bar coverage of equivalents. Instead, the Supreme Court instituted a new test, saying that "[t]he patentee must show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent." Otherwise, the amendment is presumed to bar access to the doctrine of equivalents.

This new presumptive bar limits the scope of patents compared to the pre-Festo "flexible bar." It comes down to whether the patent attorney drafting the claims should have either appealed an initial rejection or made a more careful amendment.

The Supreme Court opinion, written by Justice Kennedy, stated "[w]hile the patentee has the right to appeal, his decision to forgo an appeal and submit an amended claim is taken as a concession that the invention as patented does not reach as far as the original claim." During oral argument, Justice Kennedy had focused on the right to appeal a rejection from the Patent and Trademark Office. In particular, he recognized that tightening the doctrine of equivalents would necessitate more appeals during the patent application process.

Appealing a rejection is more fruitful than many realize. Statistics show that over half of patent applicants appealing an examiner's rejection obtain some relief. When an examiner's rejection is overturned on appeal, a resulting patent may be immune from prosecution history estoppel and competitors may be less able to design around the patent. Thus, when faced with an initial rejection, more applicants may now appeal rather than narrow their claims by amendment.

Mr. Carmichael is a partner at Lyon & Lyon and co-authored the amicus brief filed by the Association of Patent Law Firms. Mr. Carmichael is also a former Administrative Patent Judge. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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