Amicus Curiae Brief — Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

No. 00-1543 _— =

IN THE MAY 8 ca

Supreme Court of the UnitedSeremen

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FESTO CORPORATION,

Petitioner,

—VYf,——

SHOKETSU KINZOKU KOGYO KABUSHIKI Co., LTD..,

a/k/a SMC CORPORATION AND SMC PNEUMATICS, INC.,

Respondents.

ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

BRIEF OF AMICUS CURIAE FEDERATION

INTERNATIONALE DES CONSEILS EN PROPRIETE

INDUSTRIELLE IN SUPPORT OF PETITION

FOR WRIT OF CERTIORARI

MAXIM H. WALDBAUM

Counsel of Record

R. DANNY HUNTINGTON Lor! D. GREENDORFER

RAYMOND C. STEWART SALANS HERTZFELD HEILBRONN

JOHN P. SUTTON CHRISTY & VIENER

TIPTON D. JENNINGS IV 620 Fifth Avenue

New York, New York 10020

Fédération Internationale Des

(212) 632-5500

Conseils En Propriété

Industrielle Counsel for Amicus Fédération

Internationale Des Conseils

May 9, 2001 En Propriété Industrielle

AN

a a lt a tt

QUESTIONS PRESENTED

1. Whether the Federal Circuit in Festo

Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co.,

LTD., a/k/a SMC Corporation, and SMC Pneumatics,

Inc., 234 F.3d 558, 574 (Fed. Cir. 2000) (hereinafter,

“Festo”), acted contrary to the long-standing and settled

precedent of this Court and the teachings of prior

Federal Circuit decisions, contrary to public policy, and

beyond its authority, by holding that prosecution history

estoppel imposes a complete bar on the doctrine of

equivalents in a lawsuit for patent infringement

whenever an amendment to a patent claim has narrowed

the scope of such claim for a reason “related to

‘patentability’” (as such term is broadly defined by the

Festo court) (hereinafter referred to as “the Complete

Bar Rule”)?

2. Whether the impact of the Complete Bar Rule on

a patentee’s intellectual property rights, the United

States Patent and Trademark Office, the obligations of

the U.S. under international treaties, and technological

innovation on a national and global scale, requires a

review and reversal of Festo and a return to the Supreme

Court’s holding, in Warner-Jenkinson Company, Inc. v.

Hilton-Davis Chemical Co., 520 U.S. 17 (1997), that

there is a flexible bar to the doctrine of equivalents even

where a patent claim is narrowed in scope during

prosecution of the patent?

TABLE OF CONTENTS

Page

mtarest OF Tine Ammieus Curiae 20....000cccscscscccccscccscseseees l

Summary Of The Argument.......................:cccceeeeeeeeeees 3

SIT desearcitiiteaenanennadenpucdnnonssonesnnncenent 4

ne chs aidicciicrienentineiipesdstedesensesnenennens 4

B. Certiorari Should Be Granted Because The

Complete Bar Rule Is Contrary To This

Court’s Precedent And An Unprincipled

Departure From Federal Circuit Law................ ro)

C. Certiorari Should Be Granted Because Festo

Creates An Armageddon For Patent Values.....11

D. Certiorari Should Be Granted Because The

Festo Rule Will Harm Innovation And

Intellectual Property Protection...................... 15

RE ESOS SE ta 20

TABLE OF AUTHORITIES

CASES

Autogiro Co. of Am. v. United States,

ee Ue 5,12

Banff, Ltd. v. Federated Dep't Stores, Inc.,

G8 FSS Ge Cae. BID cccccccccccccesccccccccesccccsees 13

Black & Decker, Inc. v. Hoover Serv. Ctr.,

886 F.2d 1285 (Fed. Cir. 1989),

abrogated by Festo Corp. v. Shoketsu Kinzoku

Kogyo Kabushiki Co.,

234 F.3d SSE (Fed. Cir. 2000) ............cc00.....ce000s 7,8

Festo Corp. v. Shoketsu Kinzoku

Kogyo Kabushiki Co.,

234 F.3d 558 (Fed. Cir. 2000) ..................04.. passim

Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,

ee eC ee crrreerennssenesenssrntenenmees passim

Hilton Davis Chem. Co. v. Warner-Jenkinson Co.,

62 F.3d 1512 (Fed. Cir. 1995), rev'd on other

grounds,

tI bkcrinirsnnipentnsnneteennunmnibntnenenseimennat 17

Hoechst Celanese Corp. v. BP Chems. Lid.,

78 F.3d 1575, 1578-81 (Fed. Cir. 1996)................ 12

Hughes Aircraft Co. v. United States, 717 F.2d 1351

(Fed. Cir. 1983), overruled by Festo Corp. v.

Shoketsu Kinzoku Kogyo Kabushiki Co.,

234 F.3d 558 (Fed. Cir. 2000) ................. 5, 6, 9, 10

iv

Kinzenbaw v. Deere & Co.

741 F.2d 383 (Fed. Cir. 1984) ............00ccc. 9,10

Prodyne Enters., Inc. v. Julie Pomerantz, Inc.

743 F.2d 1581 (Fed. Cir. 1984) «0.00.00... 10

Warner-Jenkinson Co. vy.

Hilton-Davis Chem. Co.,

Se es SF Ce nnrmnntvntinninnsmeiininainsnnisiinanies passim

Wilson Sporting Goods Co. v. David Geoffrey &

Assocs., 904 F.2d 677 (Fed. Cir. 1990) 0000000000000... 5

STATUTES, RULES AND CONSTITUTIONAL

PROVISIONS

ee ee Oe Ci ictiecenindinenniciibiliaicniniiieiiiiantie a

ee es Oe i iciiernstteernnentinniiiiatiintiarianiiaiaciiatleaaaal 4,5

a ls Oe i erinsenienetnnntectintnnineninniniatiinibintaiaettdeell +

EE ee aN Eat eT TES 4

ee ec i irnncinttecneenertnitestneanteencnieniietiala tal a 4

A ea Ee EET 4

EE a ee 3

OS OO F—>*F—— 4

Sas SN Gv serierctrnicihicieleinnhaiiaaii eat l

MISCELLANEOUS

66 Fed. Reg. 53 (Mar. 19, 2001)..........cccccccceeeeeeees 19

Act Revising the Convention on the Grant of

European Patents Nov. 29, 2000,

Pa LGD. 7. cnnsntecatibemnsaininiemienieneenieness 18

Agreement on Trade-Related Aspects of

Intellectual Property Rights,

April 15, 1994, 33 1.L.M. 81 .0........cccceeeeeeeees passim

Brief for the United States as

Amicus Curiae,

1996 WL 17222! (U.S. Apr. 11, 1996) .......... 17, 18

David Bannerman & Chris Hamer, “Different

Approaches to the “Doctrine of Equivalents”

in Germany, UK, US and Japan”

AIPPI Journal 82 (Mar. 2000) _ ................00008 17, 18

European Patent Convention Art. 69,

OR Bi, Fie cncintnentittinnenenninnigrmnee 18

About WIPO, at http://www.wipo.org./about-

a eee 2

INTEREST OF THE AMICUS CURIAE

Fédération Internationale Des Conseils En

Propriété Industrielle (“FICPI”) respectfully submits

this brief, as amicus curiae, in support of the petition

for a writ of certiorari in this case.’ FICPI supports

review and reversal of that portion of the decision in

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,

234 F.3d 558, 574 (Fed. Cir. 2000) (hereinafter,

“Festo”), which held that prosecution history estoppel

imposes a complete bar on the doctrine of equivalents

in a patent infringement lawsuit whenever a claim

amendment has narrowed the scope of such claim for a

“reason related to patentability” (hereinafter referred to

as “the Complete Bar Rule”). FICPI otherwise takes no

position on the merits of the case.

FICPI, established in 1906, is a Switzerland-based

international and non-political association of

approximately 4,000 intellectual property attorneys

from over seventy countries (including the U-S.).

FICPI’s members represent individual inventors as well

as large, medium and small companies. One of the

members’ major roles is to advise inventors in

intellectual property matters and secure protection for

industrial innovation. FICPI supports the uniform

global protection of patents, and the interests of

'FICPI has received letters of consent from counsel! of record for

all parties pursuant to Sup. Ct. R. 37.3, as submitted herewith.

FICPI states, pursuant to Sup. Ct. R. 37.6, that counsel for the

parties did not author any portion of this brief, and that FICPI

received no “monetary contribution to the preparation or

submission of the brief” from any person or entity, other than

FICPI. The contents of this brief solely represent the views of

FICPI and not any of its individual members.

inventors and the United States Patent and Trademark

Office (“the PTO”) in a fair scope of patent protection.

FICPI is one of only two major world organizations

that advise the World Intellectual Property Organization

(“WIPO”), an intergovernmental organization, on all

intellectual property matters. In this capacity, it has

attended Diplomatic Conferences concerning

international intellectual property treaties and practices.

WIPO is dedicated to promoting and protecting

intellectual property rights worldwide. Its 177 member

states (including the U.S.) comprise almost 90% of the

world’s countries. See About WIPO, at

http://www.wipo.org./about-wipo/en/.html. As one of

the United Nations’ sixteen specialized agencies, WIPO

administers intellectual property matters recognized by

the U.N.’s member states and 21 international treaties

concerning intellectual property. See id. The U.S. is a

member of the WIPO Standing Committee on the Law

of Patents (“SCP”) and is involved with WIPO’s efforts

to harmonize substantive patent law worldwide.

FICPI’s members rely on the doctrine of

equivalents in drafting patent language, and in advising

clients involved in patent infringement lawsuits and

licensing transactions. Because many of its members

are foreign practitioners, and because of its role as a

WIPO advisor, FICPI has a unique perspective on the

global impact of the Complete Bar Rule. First, the rule

deters domestic and foreign inventors from publicly

disclosing the attributes of their inventions, instead

encouraging trade secret protection. Second, it devalues

the majority of the 1.2 million unexpired U.S. patents,

thus decreasing their licensing value to domestic and

foreign residents. Third, the message conveyed by

Festo is that the Federal Circuit can replace Congress’

role, and reverse over a century of precedent with an

unprincipled decision that dramatically impacts

patentees’ vested rights on a global scale and has far-

reaching negative legal and economic consequences to

inventors worldwide. This message is inconsistent with

the United States’ status as a world leader in

technology, and its commitment to the goal of global

harmonization of patent laws. FICPI thus urges this

Court to grant the petition for certiorari.

SUMMARY OF THE ARGUMENT

The American patent system is founded on

encouraging the creation of, and investment in,

innovative technology, which requires the participation

and cooperation of foreign countries. A flexibly applied

doctrine of equivalents (“the doctrine”) is critical to

that goal because it helps ensure that the essence of a

patented invention is protected from copyists, and

protects the value of the patent in the U.S. and abroad,

in part because major foreign countries adhere to

similar equivalents doctrines. This Court, for over 150

years, and the Federal Circuit (prior to Festo), has

adhered to a flexible bar. As discussed below, the Festo

majority’s dramatic shift to a complete bar conflicts

with this Court’s precedent and unjustifiably departs

from settled Federal Circuit precedent.

Moreover, the U.S. is responsible to the

international community for ensuring that “fair and

equitable” enforcement procedures are available “to

permit effective action against any act of infringement

of intellectual property rights .. . including . .

remedies which constitute a deterrent to further

infringements” under the Agreement on Trade-Related

Aspects of Intellectual Property Rights, April 15, 1994,

art. 41, 99 1 & 2, 33 I.L.M. 81 (hereinafter “TRIPS”).

TRIPS applies to patents. /d art. 27. As discussed

below, the Complete Bar Rule is inconsistent with these

obligations, as well as the United States’ efforts to

attain uniform global patent laws.

ARGUMENT

A. Background

The United States Constitution grants Congress the

authority to confer upon patentees certain exclusive

rights to their inventions in order to “promote the

Progress of Science and useful Arts.” U.S. Const. art. I,

§ 8, cl. 8. To obtain a patent, the inventor must

prosecute his claimed invention before the PTO. The

invention must satisfy the requirements of the Patent

Act. See, e.g., 35 U.S.C. §§ 101-03, 112. Documents

concerning exchanges between the Patent Examiner

(“the Examiner”) and the applicant concerning, inter

alia, the permissible scope of the claims, as well as any

amendments made in response to an Examiner’s

rejection, are contained in a record called the

“prosecution history.” In this adversarial process, the

patentee attempts to receive the broadest claims

possible and the Examiner attempts to limit the scope of

protection in accordance with the Patent Act. If

granted, the patent gives the patentee the right to

exclude others in the U.S. from, inter alia, making,

using, or selling the patented invention (collectively,

the “right to exclude”) for twenty years from the date

the application was filed. See id. §§ 154, 271.

A patentee can enforce his right to exclude in a

civil action for infringement. See id. § 281. A literal

infringement claim, however, does not always cover the

scenario where the accused product or process

appropriates the essence of the patented invention but

nevertheless contains an insubstantial change from the

invention. Festo, 234 F.3d at 615 (Michel, J.,

dissenting) (citing Graver Tank & Mfg. Co. v. Linde Air

Prods. Co., 339 U.S. 605, 608 (1950)) (“Graver Tank”).

Since 1853, the “doctrine of equivalents” has modified

this harsh result of a literal approach. /d. (citing Winans

v. Denmead, 56 U.S. (15 How.) 330 (1853)). The

doctrine finds infringement where the accused product

or process “'performs substantially the same function in

substantially the same way to obtain the same result’”

as the claimed invention. Graver Tank, 339 U.S. at 608

(quoting Sanitary Refrigerator Co. v. Winters, 280 U.S.

30, 42 (1929)). This doctrine was refined by the “all

elements rule” in Warner-Jenkinson Co. v. Hilton-Davis

Chem. Co., 520 U.S. 17, 29-30 (1997). See Petition for

Writ of Certiorari of Festo Corporation (U.S. Apr. 9,

2001) (“Pet. Mem.”) at 19-21.

The doctrine does not broaden the scope of patent

claims. Wilson Sporting Goods Co. v. David Geoffrey &

Assocs., 904 F.2d 677, 684 (Fed. Cir. 1990) (“the scope

of patent protection as defined by the claims — remain

the same and application of the doctrine expands the

right to exclude to ‘equivalents’ of what is claimed”)

(emphasis in original). The doctrine recognizes that a

literal claim analysis unfairly prioritizes “literary skill”

over “creativity” because the patentee must rely on

words to describe concepts typically best described

pictorially. Autogiro Co. of Am. v. United=States, 384

F.2d 391, 396-97, 399 (Ct. Cl. 1967) (“Autogiro”);

Festo, 234 F.3d at 621-22 (Linn, J., dissenting).

The patent prosecution process requires and relies

upon a flexible bar because “[a]mendment of claims is a

common practice.” Hughes Aircraft Co. v. United

States, 717 F.2d 1351, 1363 (Fed. Cir. 1983)

(“Hughes”), overruled by Festo, 234 F.3d at 574. For

example, applicants seeking to patent new technology

often cannot conduct all necessary prior art searches

before the filing deadline (see 35 U.S.C. § 102), and

thus frequently must amend. Festo, 234 F.3d at 622

(Linn, J., dissenting). Moreover, the expediency and

fairness of the process depends, as noted, on an

“iterative” and adversarial exchange between Examiner

and applicant, where the applicant agrees to amend

claims in response to an Examiner’s rejection in order

to reach agreement on a set of claims. Festo, 234 F.3d

at 618 (Michel, J., dissenting); see also Pet. Mem. at

25. |

The doctrine is applied restrictively because of its

limited purpose to prevent “fraud on a patent.” Graver

Tank, 339 U.S. at 608. The Warner-Jenkinson Court

limited the doctrine in two ways, one of which is

relevant here. There, the Court held that there is a

rebuttable presumption that a claim amendment was

made for a reason related to patentability where there is

no reason set forth in the prosecution history (“the

Silent Record Presumption”). 517 U.S. at 33-34. If the

presumption is not rebutted by the patent owner,

reliance on the doctrine is barred. /d. This presumption

necessarily recognizes that amendments do _ not

automatically trigger a complete bar to the doctrine of

equivalents. /d. at 30-31. Rather, the court must inquire

into the stated reasons for the amendment in

determining the resulting range, if any, of equivalents.

Hughes, 717 F.2d at 1363. Thus, the Warner-Jenkinson

Court’s refinement of the doctrine of equivalents

“balance[d] the competing needs of granting

meaningful protection to patentees and of notifying the

public of the effective scope of a patentee’s rights.”

Festo, 234 F.3d at 598 (Michel, J., dissenting).

The notice function of patent claims in certain ways

enhances competition because it permits others to

“design around” the claims. /d. at 577. However, it is

equally if not more important to discourage “free

riding” on a patentee’s research and development of

new technology through appropriation of the invention

with a trivial change. Jd. at 615-17 (Michel, J.,

dissenting). Indeed, as discussed infra, the doctrine

serves this goal and encourages investment in

technological innovation. Because 44% of United

States patents were issued to foreign residents in 1999

(see Appendix, submitted herewith (“A-__”) at 25),

changing the Warner-Jenkinson Court’s careful

balancing of controls likely will directly and globally

affects the patent’s scope and value. Further, domestic

and foreign licensees of U.S. patents also are affected

by a retroactive law that devalues the patent. Festo,

234 F.3d at 619 (Michel, J., dissenting).

The Festo majority claimed to further refine the

doctrine but instead effectively destroyed and/or

abandoned it. In Festo, the majority held that

“prosecution history estoppel acts as a complete bar to

the application of the doctrine of equivalents when an

amendment has narrowed the scope of a claim for a

reason related to _ patentability.” Jd at 574.

“Patentability” is not defined, but apparently includes

all narrowing amendments, converting the Warner-

Jenkinson Court’s “limited set of reasons’ for an

amendment to an “unconstrained estoppel,” if any

change is made, whether substantive or otherwise. /d. at

633-34 (Newman, J., dissenting) (quoting Warner-

Jenkinson, 520 U.S. at 30). Concerning Warner-

Jenkinson as precedent, the majority asserted, “the

question of the scope of equivalents available when

prosecution history estoppel applies to a claim element

has not been directly addressed or answered by the

Supreme Court ... where the claim was amended for a

known patentability reason.” Jd. at 569.

The process of obtaining a patent, its reliance on

claim language to define its scope and the settled

reliance on the equitable doctrine of equivalents, reveal

the magnitude of the Festo majority’s decision to

abolish the doctrine. Because almost every patent

application is amended, the Complete Bar Rule “read{s]

the doctrine of equivalents out of the law.” Black &

Decker, Inc. v. Hoover Serv. Ctr., 886 F.2d 1285, 1295

(Fed. Cir. 1989), abrogated by Feste, 234 F.3d at 574.

The result of the Festo majority’s decision is a patent

system that becomes unworkable, permanently disabled

and unjust, for several reasons. First, the Complete Bar

Rule encourages the pirating of patented inventions

through an insubstantial change to an element of an

amended claim. Festo, 234 F.3d at 641 (Newman, J.,

dissenting) (explaining that Festo provides a “new

recipe for risk-free copying”). Second, as noted, the

rule significantly devalues an unexpired patent that was

amended in reliance on the flexible bar.

Third, the rule will stifle technological innovation,

counter to the goals of the Patent Act and the goal of a

uniformly applied global patent system. See Discussion,

infra, at 11-20. Fourth, the rule does not enhance

certainty of claim interpretation because it will require

patentees to draft claims with additional language, and

to add claims in order to compensate for the loss of

equivalents, with the added result of inordinately costly

and “protracted prosecution.” Festo, 234 F.3d at 624

(Linn, J., dissenting). Fifth, if a patentee engages in the

adversarial prosecution process (rather than the more

time consuming and costly appellate procedure (see id.

at 618 (Michel, J., dissenting)), he likely will amend,

and probably will be unable to argue that his

amendment was not made for a “patentability” reason,

given its broad definition in Festo. Thus, the patentee

loses equivalents simply by engaging in the standard

prosecution process. This result is inconsistent, inter

alia, with the U.S. obligation under TRIPS to provide a

“fair and equitable” patent prosecution system. See

TRIPS, art. 62, 9 4 & art. 41, 4 2.

B. Certiorari Should Be Granted Because The

Complete Bar Rule Is Contrary To This

Court’s Precedent And An Unprincipled

Departure From Federal Circuit Law

Prior to Festo: (1) this Court expressly declined to

adopt a Complete Bar Rule; (2) courts applied the

doctrine on a case by case basis and with a flexible

range of equivalents; and (3) courts were required to

determine, with respect to narrowed claims, “what was

surrendered and why, measured by the representations

made by the applicant in order to obtain the patent.”

Festo, 234 F.3d at 631-32 (Newman, J., dissenting).

The Warner-Jenkinson Court “endorsed” the

approach of over 150 years of Supreme Court precedent

which recognized a flexible bar and preserved the

balancing of controls. Jd. at 608-09 (Michel, J.,

dissenting); Warner-Jenkinson, 520 U.S. at 30-32; see

also Pet. Mem. at 19-20, 22-23. Thus, contrary to

Festo, the potential for a complete bar rule was

addressed and rejected by the Warner-Jenkinson Court.

Pet. Mem. at 5-6, 14-15. In rejecting such a rule, the

Court also considered the PTO’s reliance on a flexible

bar in requesting amendments: “[t]o change so

substantially the rules of the game now could very well

subvert the various balances the PTO sought to strike

when issuing the numerous patents which have not yet

expired.” Warner-Jenkinson, 520 U.S. at 32 n. 6.

Further, the Complete Bar Rule is a dramatic shift

from established Federal Circuit precedent from 1983-

2000. See Festo, 234 F.3d at 609-15 (Michel, J.,

dissenting). In Hughes, for example, the court rejected

a “wooden application of estoppel” and adhered to a

flexible range of equivalents. Hughes, 717 F.2d at 1362.

In Kinzenbaw v. Deere & Co., 741 F.2d 383, 389 (Fed.

Cir. 1984), which Festo interpreted as applying a

10

complete bar (Festo, 234 F.3d at 572-75), the court

refused to speculate concerning the range of equivalents

that would have resulted had the patentee not narrowed

his claim to the extent he did. Kinzenbaw, 741 F.2d at

389. The Kinzenbaw court did, however, examine the

“exact scope of surrender” consistent with a flexible

approach. Festo, 234 F.3d at 610-11 (Michel, J.,

dissenting); see also id. (citing Prodyne Enters., Inc. y.

Julie Pomerantz, Inc., 743 F.2d 1581, 1583 (Fed. Cir.

1984), as following the Kinzenbaw court’s strict

approach to a flexible doctrine of equivalents).

Compared to Hughes, Kinzenbaw and Prodyne

Enterprises represent a strict approach to a flexibly

applied equivalence doctrine, mecessary where a

patentee takes aggressively unreasonable positions on

claim interpretation. See, e.g., Kinzenbaw, 741 F.2d at

389. However, “[i]t is inappropriate to convert the

extremes of this continuum into ‘conflicting lines,’ and

then to use this contrived conflict to justify changing

the law to eliminate not only both lines but also

everything in-between.” Festo, 234 F.3d at 634

(Newman, J., dissenting). Thus, the Festo majority’s

shift from a flexible to a complete bar is unprecedented

and “contrary to any notion that judge-made law

should evolve in a consistent, gradual and predictable

fashion.” Jd. at 610 (Michel, J., dissenting). Moreover,

the Festo majority did not explain the error in any of

the prior decisions applying a flexible bar. /d. at 612,

619.

The Complete Bar Rule is inconsistent with settled

precedent on additional grounds. First, it moots the

Silent Record Presumption. /d. at 625-26 (Linn, J.,

dissenting). Second, the Festo majority’s broad

definition of “patentability” further restricts access to

equivalents, “exacerbat[ing] the conflict with .

Warner-Jenkinson.” Id. at 630 (Newman, J.,

1]

dissenting). Third, the rule unjustly abandons the

equitable foundation of the doctrine. /d at 617

(Michel, J., dissenting) (citing Hecht Co. v. Bowles, 321

U.S. 321, 329-30 (1944), emphasizing: “[f}lexibility

rather than rigidity has distinguished [equity

jurisdiction]”). “Without this flexibility, courts are

precluded from protecting patentees from copyists.” /d.;

cf. TRIPS, art. 41, J 1-2 (requiring “fair and equitable”

and “effective” patent “enforcement procedures”). In

sum, the Festo majority’s decision is unprincipled law

which attacks the global value of a patent from all

angles. See Graver Tank, 339 U.S. at 607 (warning that

a literalistic approach “convert[s] the protection of the

patent grant into a hollow and useless thing .-. . . [and]

encourage[s} the unscrupulous copyist to make

unimportant and insubstantial changes and substitutions

in the patent which, though adding nothing, would be

enough to take the copied matter . . . outside the reach

of law”).

C. Certiorari Should Be Granted Because

Festo Creates An Armageddon For

Patent Values

The Complete Bar Rule will have a direct and far-

reaching impact on patentees, inventors, the PTO and

the public, both in the United States and globally,

because the majority of the approximately 1.2 million

unexpired patents are subject to this rule. The main

policy reasons the Festo majority offers for the

Complete Bar Rule are that (1) it will enhance the

“notice function”; and (2) the flexible bar rule is

“*unworkable.’” Festo, 234 F.3d at 575-78.

Contrary to Festo, a flexible bar is consistent with

the notice function. First, a competitor can discern the

meaning and scope of amended claim language

(including potential equivalents) by reviewing the

12

prosecution history. /d. at 626 (Linn, J., dissenting).

Indeed, “the scope and meaning of claim limitations

may be more easily discerned for amended limitations

.. . based on the record developed during prosecution.”

Id. Second, competitors are protected by a

reasonableness standard, ie., “whether persons

reasonably skilled in the art would have known of the

interchangeability of an ingredient not contained in the

patent with one that was.” Graver Tank, 339 U.S. at

608-09. Third, the Silent Record Presumption ensures

that third parties are not burdened with determining the

meaning of omissions from the prosecution history.

Fourth, the restriction to a literal analysis does not

enhance the notice function sufficiently to justify

abolishing this equitable doctrine, because even a literal

analysis can result in varying interpretations and

require consideration of the prosecution history. See

Autogiro, 384 F.2d at 396 (“The very nature of words

would make a clear and unambiguous claim a rare

occurrence.”); Hoechst Celanese Corp. v. BP Chems.

Lid., 78 F.3d 1575, 1578-81 (Fed. Cir. 1996) (dispute

concerning the meaning of “stable” in a patent claim).

Fifth, this Court, for over a century, and the Federal

Circuit, for nearly two decades, have found the “notice

function” adequately served despite the flexible bar. /d.

at 598-616, 619 (Michel, J., dissenting).

Similarly, the Festo majority erroneously

concluded that the doctrine is “unworkable” because

courts may differ on the extent of the subject matter

found relinquished through amendment. /d. at 575. As

noted, however, a literal approach also is vulnerable to

varied interpretations of claim language. Further, there

has been no call for bright-line rules in trademark or

copyright law, or tort and securities laws, despite the

potential for varied outcomes in those areas because of

fact-based inquires and reasonableness standards. See,

13

e.g. Banff, Lid. v. Federated Dep't Stores, Inc., 841

F.2d 486, 489-90 (2d Cir. 1988) (applying “ordinar[y]

prudent purchaser[(]” standard to determine likelihood

of confusion in trademark case); cf Warner-Jenkinson,

520 U.S. at 37 (“Much as the perspective of the

hypothetical ‘reasonable person’ gives content to

concepts such as ‘negligent’ behavior, the perspective

of a skilled practitioner provides content to, and limits

on, the concept of ‘equivalence.’”). That businesses

may need to structure their conduct and assess risks in

light of a flexible bar is consistent with what the law

imposes in these other areas.

Indeed, the distinction made by the Festo majority

between amended and unamended claims is arbitrary

and illogical: “The majority does not explain why a new

bright line rule is compelled to strictly construe the

inventor’s choice of words in amendments but not

similarly compelled for original claim limitations.”

Festo, 234 F.3d at 626 (Linn, J., dissenting). Thus, the

complete bar should be viewed as an abuse of patent

procedure proscribed by TRIPS. See TRIPS, art. 41, 4

1. Finally, it is well settled that a failure to support

innovation with strong patent protection will negate the

benefits from, and results of, scientific research, and is

inconsistent with the Constitution’s mandate to protect

inventors from copyists (see Festo, 234 F.3d at 621;

640-41 (Linn, J.; Newman, J., dissenting)), and the

international goal, supported by the U.S., of global

protection and enforcement of patents.

The Complete Bar Rule also unjustly frustrates the

expectations of inventors, patentees, the PTO and the

public, on a global scale. During prosecution,

applicants and Examiners typically rely on the

availability of some range of equivalents even when

claims are narrowed in response to rejections. /d. at

618 (Michel, J., dissenting); Warner-Jenkinson, 520

14

U.S. at 32 n.6. In light of Festo, however, even where

the PTO requests only “minor or clarifying

amendments,” applicants likely will appeal an

Examiner’s rejection to the PTO Board of Patent

Appeals (which already is overwhelmed with appeals)

rather than lose equivalents through amendment. Festo,

234 F.3d. at 618, 624 (Michel, J., Linn, J., dissenting).

Thus, Festo will seriously disrupt the patent system. /d.

at 618-19 (Michel, J., dissenting).

Further, the Complete Bar Rule lengthens the

prosecution process because inventors will be forced to

add claims, numerous equivalent terms, and any

insubstantial variation of the claimed invention, to

account for the loss of equivalents. /d. at 624 (Linn, J.,

dissenting); cf TRIPS, art. 41, 991-2; art. 62, 991-2.

The attorney's drafting skills will be prioritized over

the attributes of the invention (with significant added

prosecution costs). Festo, 234 F.3d at 624 (Linn, J.,

dissenting). These likely scenarios frustrate the goals of

the Patent Act, which prioritizes the essence of the

invention over its linguistic description. See Graver

Tank, 339 U.S. at 607; A-1-8, 10-14, 16-21 (attaching

excerpts of, and commentary concerning, the U.S.

supported WIPO Draft Substantive Patent Law Treaty

(the “SPLT”) providing for an equivalents doctrine

consistent with pre-Festo law). In contrast, the Festo

majority did not consider the Warner-Jenkinson Court’s

careful balancing of controls, the equitable nature of the

doctrine, or the impact of the rule given the United

States’ efforts to harmonize substantive patent laws and

its role as a world leader in encouraging technological

innovation, as discussed in the next section.

15

D. Certiorari Should Be Granted Because The

Festo Rule Will Harm Innovation And

Intellectual Property Protection

The Festo majority concluded, without any relevant

basis or evidence, solely relying on its “experience,”

that the Complete Bar Rule will stimulate innovation,

i.e., the ability to design around the patent. Festo, 234

F.3d at 612 (Michel, J., dissenting). However, the court

ignored the overriding consideration that the flexible

bar is consistent with the more important goal of

encouraging competitors to make “‘leapfrogging’

advances instead of simply copying at the edge of the

claims.” /d. at 640 (Newman, J., dissenting). It is well

settled that “technological advance and industrial vigor

flow from legal and economic policies that encourage

invention and support investment in the products of

invention.” /d. at 639. Other studies indicate that a

bright line rule negatively impacts industrial

innovation. /d. at 639-41.

Generally, “long-term economic growth requires a

policy framework that encourages the creation and

commercialization of new technologies, as contrasted

with a policy that facilitates appropriation of the

creative product, lest the creative product dry up in the

face of too-easy appropriation.” /d. at 640 (explaining

that such “‘[k]nowledge capital,’"” secured by

intellectual property rights, is an important “foundation

of economic growth” and that patent protection should

be of “sufficiently broad scope to the inventor who

opens a new field, to provide adequate economic

incentives while avoiding duplication of effort and

discouraging recourse to secrecy”) (citing authority).

Thus, “placing new technology in the public

domain” may decrease the “profit opportunity” and thus

the incentive to “launch a new technology.” /d. at 641

16

(citing authority). The Festo majority, however, did not

consider the costs incurred, or risks taken, by

innovators in new markets. /d. at 640. In contrast, the

imitator, protected by Festo, incurs none of these costs

or risks, and yet, unjustifiably enjoys broad protection

from liability, to the innovator’s detriment. /d. In

addition, the rule prohibitively increases the costs to

“individual inventors and start-up companies.” /d. at

624 (Linn, J., dissenting). To compensate for the loss of

equivalents through amendment, they likely will incur

the “prohibitively high” costs and delays inherent in

“exhaustive pre-filing searches” and in filing road

claims and appealing, rather than amending in response

to, rejections. Jd The end result will be to impede

rather than to advance “technological progress.” /d.

The rule also deprives the public “of useful

teachings contained in patent applications that are

simply abandoned after a rejection is made regarding a

critical claim limitation.” Jd. at 618 (Michel, J.,

dissenting). Without access to a range of equivalents,

and given the risk of close imitation, inventors likely

will seek trade secret protection, thus stifling the

sharing of new technology. See Graver Tank, 339 U.S.

at 607 (explaining that permitting only claims for literal

infringement “would foster concealment rather than

disclosure of inventions, which is one of the primary

purposes of the patent system”); cf A-25 (Q. Todd

Dickinson, then Assistant Secretary of Commerce and

Commissioner of Patent & Trademarks, noting,“[t}he

ingenuity and creativity of American inventors has

established the U.S. as the technological leader among

nations”). Further, abandoning the doctrine devalues

patents without sufficient notice to patentees, licensees

or the public. Cf Warner-Jenkinson, 520 U.S. at 32.

Festo “affects myriad vested rights, on a novel legal

17

theory, without briefing or argument.” 234 F.3d at 642

(Newman, J., dissenting).

For these reasons, the Complete Bar Rule also will

harm the United States’ economic and diplomatic

relationships with foreign countries as well as the goal

of global harmonization of patent laws. Specifically, the

rule is inconsistent with the United States’

encouragement of foreign nations that provide patent

protection to U.S. citizens “to afford patent protection

commensurate with that provided in the United States

by the doctrine of equivalents.” Brief for the United

States as Amicus Curiae, 1996 WL 172221, at *1-2

(U.S. Apr. 11, 1996), filed in Warner-Jenkinson.

Likewise, the rule will hamper the United States’ goal

to “enhance its ... international trade with the aid of

intellectual property. Indeed, recent economic history

illustrates the stagnation of the economy coinciding

with periods of diminished industrial investment in

technologic advance.” Hilton Davis Chem. Co. vy.

Warner-Jenkinson Co., 62 F.3d 1512, 1531 (Fed. Cir.

1995) (Newman, J., concurring), rev'd on other

grounds, 520 U.S. 17 (1997).

The devaluation of patent rights resulting from the

Complete Bar Rule likely will deter foreign licensing

activities here, particularly since certain of the member

countries that subscribe to TRIPS adhere to an

equivalents doctrine, including Japan, Germany,

France, the United Kingdom, and Australia. See A-22-

24, 27-28 (attaching French and Australian equivalents

doctrines); David Bannerman & Chris Hamer,

“Different Approaches to the ‘Doctrine of Equivalents’

in Germany, UK, US and Japan,” AIPPI Journal 82,

82-94, 98 (Mar. 2000) (setting forth the doctrines of

equivalents in the United Kingdom, Germany and Japan

and concluding: “There seems to be an international

tendency towards convergence of the law on doctrine of

equivalents, at least as regards Europe and Japan.”).

In addition, the Complete Bar Rule is counter to the

European Patent Convention’s (“EPC”) goal of

harmonizing patent laws. EPC Article 69 notes the

need to consider, in interpreting patent claims, sources

other than the claim language, such as the “‘description

and drawings’” and Article 69 is itself interpreted to

provide “‘fair protection for the patentee with a

reasonable degree of certainty for third parties.’” See

Bannerman, supra, at 83 (quoting EPC, Oct. 5, 1973,

Protocol on the Interpretation of Article 69 of the

Convention (“the Protocol”)). A recent revision to the

Protocol, which is not yet in force, requires

consideration of an “equivalent to an element specified

in the claims” in determining the “extent of protection

conferred by a European patent.” Act Revising the

Convention on the Grant of European Patents, Nov. 29,

2000, Protocols, art. 2.

Thus, the Complete Bar Rule will create an

imbalance in patent values between the U.S. and major

foreign countries. Accordingly, foreigners seeking

patent protection may be forced to incur the cost and

delay of preparing and filing different applications in

their home country and the United States to avoid loss

of equivalents here. Indeed, certain foreign inventors

may be reluctant to file for patent protection here,

reducing revenue to the PTO, which issued 44% of its

patents in 1999 to foreign residents, 25% of which were

issued to Japanese and German residents. A-25-26. This

imbalance in the scope of patent protection also will

impede the goal of uniform and effective global patent

protection, which is essential if the United States is to

remain a world leader in technological innovation. See

generally Brief for the United States as Amicus Curiae,

supra, at *1-2.

19

The rule also is inconsistent with the United States’

significant efforts, as a WIPO and SCP member, to

harmonize national patent formalities: on an

international scale in order to provide easier access to

worldwide patent protection and reduce costs to patent

applicants. The draft SPLT is a product of such

international efforts. See Discussion, supra, at 2-3, 14;

see also 66 Fed. Reg. 53 (Mar. 19, 2001) (requesting

comments on the SPLT).

For all these reasons, the Festo majority exceeded

its authority in this case. Perhaps it is for Congress to

determine this issue. As this Court stated: “Congress

can legislate the doctrine of equivalents out of existence

any time it chooses .. . . The various policy arguments

made by both sides are thus best addressed to Congress,

not this Court.” Warner-Jenkinson, 520 U.S. at 28.

Indeed, Congress implicitly supported the doctrine by

passing the Patent Act in 1952, after Graver Tank was

decided, without attempting to legislate around the

doctrine. See id. at 25-27.

Finally, the Festo majority’s implied warning that

the flexible bar approach will “undermine the claiming

system and destroy the public’s ability to rely on the

patent claiming system to mark the boundaries granted

to the patentee” is one that has been voiced since 1853

in dissenting opinions in cases upholding the flexible

bar. /d. at 627-28 (Linn, J., dissenting). However, the

concerns underlying these dire predictions are

misplaced, and, significantly, have not come to pass.

Id. If this Court does not grant the petition for

certiorari, leaving Festo as the law will, inter alia (1)

render the United States non-compliant with its

international commitments under TRIPS; (2) disrupt the

continued pursuit of substantive harmonization of

patent laws; (3) negatively impact ongoing efforts to

reduce the costs of obtaining patent protection here and

20

abroad; and (4) directly harm the role of the U.S. as a

world leader in technological innovation.

CONCLUSION

For all the foregoing reasons, the petition for a writ

of certiorari should be granted in this case.

Respectfully submitted,

Maxim H. Waldbaum R. Danny Huntington

Counsel of Record Raymond C. Stewart

Lori D. Greendorfer John P. Sutton

Salans Hertzfeld Heilbronn Tipton D. Jennings IV

Christy & Viener Fédération Internationale

620 Fifth Avenue Des —" En

New York, New York 0

10020 Industrielle

May 9, 2001

APPENDIX

TABLE OF CONTENTS

World Intellectual Property Organization, Geneva,

Standing Committee On the Law of Patents, Fourth

Session, Geneva, November 6 to 10, 2000, Suggestions

for the Further Development of International Patent

WIPO World Intellectual Property Organization,

Geneva, Standing Committee On the Law of Patents,

Fifth Session, Geneva, May 14 to 19, 2001, Draft

Substantive Patent Law Treaty .................::00e000--A-12

WIPO World Intellectual Property Organization,

Geneva, Standing Committee On the Law of Patents,

Fifth Session, Geneva, May 14 to 19, 2001, Draft

Regulations And Practice Guidelines Under

The Draft Substantive Patent Law Treaty ..............A-18

Doctrine of Equivalents in France (Cabinet Beau de

Lomenie, Conseils En

EE

1999 Patent Statistics Announced

(Press Release #00-16, Mar. 2, 2000).....................A-25

Doctrine of Mechanical Equivalents

(IP Australia, APO Manual of Practice &

A-1l

WORLD INTELLECTUAL PROPERTY

ORGANIZATION

GENEVA

STANDING COMMITTEE ON THE LAW

OF PATENTS

Fourth Session

Geneva, November 6 to 10, 2000

SUGGESTIONS FOR THE FURTHER

DEVELOPMENT OF INTERNATIONAL

PATENT LAW

Document prepared by the International Bureau

A-2

I. Introduction

1. The Program and Budget for 2000-2001

includes, under Sub-Program 09.1, “Law of Patents,”

the following activities, inter alia (see

document A/34/2-WP/PBC/2, page 80, emphasis

added):

“Convening of four meetings’ of the SCP (and any

Working Group set up by this Committee), to

consider issues relating to the law of patents,

including:

- the finalization of the draft Patent Law Treaty

and draft Regulations, using wherever possible

solutions adopted for PCT procedures:

convening of a Diplomatic Conference for the

conclusion of the Patent Law Treaty, and

consideration of the desirability and feasibility

of further harmonizing patent law,

2. During the 1998-1999 biennium, the Standing

Committee on the Law of Patents (SCP) devoted its

time to the negotiation and finalization of the Patent

Law Treaty (PLT), which was adopted at the

Diplomatic Conference for the Adoption of the PLT,

held in Geneva from May 11 to June 2, 2000.

3. Concerning the future work of the SCP, during

its earlier sessions as well as at the PLT Diplomatic

Conference, a considerable number of delegations and

* One of these four sessions has been replaced by

the Diplomatic Conference for the Adoption of

the Patent Law Treaty.

A-3

representatives have expressed their wish to consider

issues related to further harmonization of substantive

requirements of patent law after the conclusion of the

PLT. ‘

4. The present document contains suggestions for

issues related to further harmonization of patent laws.

for consideration by the SCP at its fourth session (the

first time the SCP will meet during the 2000-2001

biennium), and at its future sessions.

Il. Issues related to further harmonization for

ideration by the SCP

5. A number of delegations and representatives had

expressed the position, at the first session, first part,

of the SCP (June 15 to 19, 1998), that discussions

concerning further harmonization, in particular

harmonization of substantive issues of patent law,

should be resumed as soon as possible after the

conclusion of the Diplomatic Conference (see

document SCP/1/7, paragraphs 24, 25, 27, 33, 34, 35,

37, 40, 44, 55, 56, 57, 58 and 73). In this context, it

may be noted that, at its third meeting held on May 4

and 5, 2000, the Industry Advisory Commission of

WIPO adopted a Resolution calling for “work, in the

medium term, on a treaty on the harmonization of

substantive patent law, with a view to facilitating

greater mutual recognition of search and examination

results by patent Offices.” In addition, the Policy

Advisory Commission of WIPO made several

recommendations at its meeting of June 15, 2000,

among which one reads as follows: “that efforts

should be made towards further substantive

harmonization in the field of industrial property law,

in particular, patent law.”

A4

6. It should be noted that the Patent Cooperation

Treaty (PCT), which has established a system for the

filing of international patent applications having the

same effect as national applications filed in each of

the PCT Contracting States designated in the

international application, contains a number of

principles of substantive patent law applicable to the

international phase provided under the PCT.

However, it may also be noted that PCT Article 27(5)

allows a Contracting State to apply any substantive

conditions of patentability as it desires during the

national phase.

7. In response to international calls for

harmonization of national and regional patent laws,

negotiations had started, as early as 1985, on a draft

Treaty Supplementing the Paris Convention as far as

Patents are Concerned (hereafter referred to as “draft

Patent Harmonization Treaty 1991”), which was

discussed at the first part of a Diplomatic Conference

in 1991, but never concluded. The draft Patent

Harmonization Treaty of 1991 included substantive as

well as formal aspects of patent law. Some of its

provisions, for instance those on patentable subject

matter, rights conferred, term of protection and

reversal of burden of proof for process patents, were

incorporated into the Agreement on Trade-Related

Aspects of Intellectual Property Rights (TRIPS

Agreement), concluded in 1994. Nevertheless, a

number of issues in respect of national and regional

patent law have neither been addressed by the TRIPS

Agreement, nor by any other worldwide international

treaty on patent law, in particular not by the recently

adopted PLT, which covers only patent formalities.

For the sake of completeness, it should be added that

important steps in respect of such harmonization have

A-5

been achieved in the framework of certain regional

systems, such as the European Patent Organisation

(EPO), the Eurasian Patent Organization (EAPO), the

African Regional Industrial Property Organization

(ARIPO) and the Organisation africaine de la

propriété intellectuelle (OAPI), as well as through the

harmonization of national laws’ within certain regional

systems, as for instance the Andean Pact.

8. The need for further patent harmonization

beyond the PLT arises mainly from the’ fact that the

costs of obtaining broad patent protection on an

international level have become extremely high. The

objective of further harmonization should therefore be

to lower costs. This goal can, however, only be

envisaged if a number of basic legal principles

underlying the grant of patents are harmonized.

9. In view of the present situation and the objective

mentioned above, the International Bureau. suggests

that at least the following basic issues underlying the

grant of patents, which are of particular importance to

the further development of the international patent

system, could be included in the discussions of the

SCP: the definitions of prior art, novelty, inventive

step (non-obviousness) and industrial applicability

(utility); sufficiency of disclosure; and the structure

and interpretation of claims.

10. In order to facilitate discussions of the SCP

concerning the desirability and feasibility of further

harmonizing patent law, each of the six mentioned

issues are described below by (1) explaining the basic

issue, (2) giving examples of the present status of laws

and practices between different systems showing the

existence of, or need for further, harmonization, and

(3) indicating the relevant provisions under the first

A-6

draft Patent Harmonization Treaty of 1991 and the

solution proposed therein. The Basic Proposal for the

draft Patent Harmonization Treaty of 1991 and the

Regulations are presented, for information purposes,

in document SCP/4/3. The Notes for the Basic

Proposal for the draft Patent Harmonization Treaty of

1991 and the Regulations are contained in

document SCP/4/4.

A. Prior art

The basic issue

11. Prior art is generally understood to constitute the

body of knowledge which was available to the public

before the filing date or, if priority is claimed, before

the priority date, of a patent application. Identifying

the relevant prior art is one of the cornerstones of

patent examination, since such prior art will be

evaluated during examination to determine the

patentability of the invention concerned. It is by

comparing the invention for which protection is

sought with the prior art that novelty and inventive

step (non-obviousness) of the invention are

established. Furthermore, prior art will, after the grant

of a patent, be determining in order to evaluate the

validity or invalidity of the patent.

12. Some of the issues to be considered in the

context of prior art include, in particular, notions such

as “availability to the public,” “person skii. 4 in the

art,” and “means of making available to the public.”

Further items to be considered are, in particular, issues

such as non-prejudicial disclosures, the grace period,

or the question of applications filed earlier than, but

published after, the date of filing of the application

concerned.

A-7

Draft Patent Harmoniz ition Treaty 1991

32. The Basic Proposal for the draft Patent

Harmonization Treaty of 1991 contained, in Article 25

“Obligations of the Right Holder,” two alternatives.

Alternative A proposed to include no provision on this

subject at all, while alternative B contained the following

provision relating to the disclosure of an invention in

Article 25(1):

“(1) The owner of a patent shall have at least the

following obligations in addition to any other

provided for in this Treaty:

(i) to disclose the invention in a manner

sufficiently clear and complete for the invention to

be carried out by a person skilled in the art; the

description shall set forth at least one mode for

carrying out the invention claimed; this shall be

done in terms of examples, where appropriate, and

with reference to the drawings, if any; however,

any Contracting Party may provide that the

description set forth the best mode for carrying out

the invention known to the inventor at the filing

date or, where priority is claimed, priority date of

the application; ...”

F. Drafting and interpretation of claims

The basic issue

33. The claims define the invention, and thus the

scope of protection of the patent. They are therefore

the heart of the patent. This is true in particular after

the grant of the patent, since others may not

commercially use what is covered by the claims, but

may use any other information contained in the

specification. It is therefore particularly important

A-8

that claims contain all the important features of the

claimed invention. The claims form the basis for the

examination as to the patentability of the invention.

In addition, they may be affected by partial

renunciation or invalidity of the patent, and they are

relevant for the question of unity of invention. They

also play a role when defining the contents of two .

inventions in the case of dependency or priority

contests under the first to invent system, and when

assessing the identity of inventions in the framework

of the prohibition of double patenting.

34. When talking about claims, there are two

different aspects to take into consideration: firstly,

the drafting of the claims, and secondly the

interpretation of the claims.

Status of harmonization

35. Article 6 of the PCT states the following:

“The Claims

The claim or claims shall define the matter for which

protection is sought. Claims shall be clear and

concise. They shall be fully supported by the

description.”

36. In addition, PCT Rule 6 contains, in particular,

indications on the manner of claiming, on the

numbering of claims, as well as further details. In the

context of claims, it may be mentioned that

PCT Rule 13 deals with the issue of unity of

invention.

37. Nevertheless, both the drafting and the interpretation

of claims diverge significantly in different legal systems,

which may lead to different scopes of protection for the

same invention, and to different results in the case of

A-9

invalidity determinations. Some of these differences are

described below.

Drafting of clai

(a) Certain systems require that only the technical

features of the invention be contained in the claims,

but not other features, such as economical or other

elements. This is not the case for all patent systems.

It has to be noted, however, that not all systems

require an invention to have a technical character.

(b) While certain patent systems require a two-part

form of the claims (the first part containing the

designation of the subject matter belonging to the

prior art, the second part being the characterizing part

indicating the new technical features for which

protection is claimed), other systems do not require

this kind of structure, so that the prior art basis does

not always appear in the claims.

(c) Certain patent laws allow for a plurality of

closely related independent claims reflecting a single

inventive concept to be contained in the same

application (“unity of invention”), while according to

other laws, the respective provisions are applied in a

very narrow manner.

(d) While certain legal systems allow for different

categories of claims, such as for instance product,

process or apparatus claim, to be included in the same

application, other patent systems have restrictions in

this respect.

(e) Certain patent systems provide for restrictions on

the dependency of sub-claims, which lead to a high

number of dependent claims and, in certain offices, to

A-10

high costs due to additional fees to be paid for each

claim in excess of a certain number.

(f) Certain systems allow the lack of support of the

claims by the description to be a ground for rejection or

invalidation of the patent.

Interpretation of claims

(a) In most patent systems, the literal text of the

claims forms the basis for the determination of the

scope of protection of the patent. However, while

certain systems do not allow an interpretation of the

claims to go much beyond their wording, others have

developed a broad way of interpreting the claims.

(b) In certain systems the claims have to be

interpreted in an objective manner, while in others,

what the inventor subjectively had intended to say is

taken into consideration.

(c) In certain patent systems, only the description

and the drawings may be used in order to interpret the

claims. In other systems, further - or additional -

means of interpreting the claims may be allowed.

(d) While certain legal systems provide that

equivalents are covered by the claims, other legal

systems do not provide for equivalents. In many

systems, the doctrine of equivalents has been

developed by case law, and is not to be found in

statutory law. Systems vary widely as to the scope of

equivalents applied.

(e) The possibilities to amend the claims during

examination, as well as after the grant of the patent,

vary considerably in different systems.

A-11

Draft Patent Harmonization Treaty 1991

38. The Basic Proposal for the draft Patent

Harmonization Treaty of 1991 contained the following

detailed provisions related directly or indirectly to

claims: Articles4 (“Claims”), 5(“Unity of

Invention”) and 21 (“Extent of Protection and

Interpretation of Claims”), and Rules 3 (“Manner of

Claiming”) and 4(“Details Concerning the

Requirement of Unity of Invention”).

IV. Conclusion

39. In view of the above, the SCP is invited to note and

consider the suggested issues related to the further

development of international patent law. The SCP is

invited, in particular, to express its guidance to the

International Bureau as to whether and to what extent the

mentioned issues should be included in the future work of

the SCP. :

A-12

WIPO

WORLD INTELLECTUAL

PROPERTY ORGANIZATION

GENEVA

STANDING COMMITTEE ON THE LAW

OF PATENTS

Fifth Session

Geneva, May 14 to 19, 2001

DRAFT SUBSTANTIVE PATENT LAW TREATY

prepared by the International Bureau

A-13

INTRODUCTION

1. At its fourth session, held from November 6

to 10, 2000, the Standing Committee on the Law of

Patents (SCP) agreed that the International Bureau

should submit draft provisions for a future legal

instrument on the substantive harmonization of

patent law. The present document contains a first

draft of a Treaty, presently called the “Substantive

Patent Law Treaty (SPLT).” It takes into account

the views expressed at the fourth session of the

SCP.

2. The SCP further expressed the wish that the

International Bureau should submit two distinct

versions of draft provisions on the SPLT: one

version should be based on existing texts, such as

the “Draft Treaty Supplementing the Paris

Convention as Far as Patents Are Concerned”

(“1991 Draft”; see documents PLT/DC/3 and 69)

or the Patent Cooperation Treaty (PCT), while the

second version should use new and plain language.

In the course of drafting the present document, it

became apparent that it may be more appropriate to

establish a single text containing two alternatives.

Thus, the document contains, where appropriate, an

Alternative A, which is based upon, but is not

necessarily identical to, existing texts as explained

above, and an Alternative B, which uses more

contemporary language. Where the text of

Alternative A is not identical to earlier existing

texts, such as, for example, the 1991 Draft, this is

to take into account the international developments

that occurred since the establishment of these texts,

and to reflect the wish of the SCP to achieve full

harmonization, without permitting _ territorial

A-14

differences between countries. As agreed by the

SCP at its fourth session, the draft provisions are

limited to certain determined issues, in particular

those contained in paragraph(9) of document

SCP/4/2.

3. ,It should be noted that certain of the

suggested provisions (for example draft Article 9)

reflect a first-to-file system, since their origin is to

be found in existing texts. This approach does,

however, not prejudice the future drafting of the

relevant provisions in any way, but was chosen

merely to reflect certain provisions of existing

texts, such as the 1991 Draft.

4. Draft Regulations and Draft Practice

Guidelines under the SPLT are contained in

document SCP/5/3. These provisions are presented

without an alternative and are based on existing

texts only, since their future wording will depend

on the choice of the SCP with respect to the

drafting style of the Articles.

PART I: GENERAL PROVISIONS

Article 1

Abbreviated Expressions

For the purposes of this Treaty, unless

expressly stated otherwise:

(i) except where the context

indicates otherwise, words in the singular include

the plural, and vice versa, and masculine personal

pronouns include the feminine.

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Article . lbis

Applications [and Patents] to Which the Treaty

Applies

(1) [Principle] Subject to paragraph (2), the

provisions of this Treaty and the Regulations shall

apply tof:

. (i)} applications for patents for

invention and for patents of addition, which are

filed with or for the Office of a Contracting Party/;

. (ii) patents for invention, and to

national and regional patents of addition, which

have been granted with effect for a Contracting

Party}.

(2) [Reserved]

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Article ]3

Scope of Claims

[Alternative A]

[No provision. ]}

[End of Alternative A]

[Alternative B]

The scope of the claim shall not exceed the

scope of the disclosure of the application.

However, the claim shall not be limited to what is

expressly disclosed in the application.

{End of Alternative B]

Article 14

[Alternative A]

Scope of Protection

(1) [Scope] The scope of protection

conferred shall be determined by the claims, which

are to be interpreted in the light of the description

and drawings, as prescribed in the Regulations.

[(2) [Equivalents] For the purpose of

determining the scope of protection conferred by

the application, due account shall be taken of

elements which are equivalent to the elements

expressed in the claims, as prescribed in the

Regulations. }

[End of Alternative A]

[Alternative B}

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Interpretation of Claims

For the purposes of examination, and of

determining rights under a published application,

each claim shall be interpreted in light of the

[description, drawings] [disclosure] and the prior

art, as prescribed in the Regulations.

[End of Alternative B]

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WORLD INTELLECTUAL PROPERTY

ORGANIZATION

GENEVA

STANDING COMMITTEE ON THE LAW

OF PATENTS

Fifth Session

Geneva, May 14 to 19, 2001

DRAFT REGULATIONS AND PRACTICE

GUIDELINES UNDER THE DRAFT

SUBSTANTIVE PATENT LAW TREATY

prepared by the International Bureau

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INTRODUCTION

The present document contains draft

Regulations and draft Practice Guidelines under the

draft Substantive Patent Law Treaty (SPLT), which

is contained in document SCP/5/2.

Unlike in the draft SPLT, the draft

Regulations and draft Practice Guidelines contained

in the present document are based on existing texts

only. No alternatives are suggested at this stage,

since their future wording will depend on the

choice of the SCP with respect to the drafting style

of the draft SPLT (see also the explanations given

in the introduction part of document SCP/5/2).

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Rule 1]

Interpretation of Claims Under Article 14

(1) [Principle] For the purposes of

Article 14(1), the claims shall be so interpreted as

to combine fair protection for the applicant with a

reasonable degree of certainty for third parties.

Consequently, the claims shall not be interpreted as

being necessarily confined to their strict literal

wording. Neither shall the claims be considered as

mere guidelines allowing that the protection

conferred by the application extends to what, from

a consideration of the description and drawings by

a person skilled in the art, the applicant has

contemplated, but has not claimed.

[(2) [Equivalents] For the purposes of

Article 14(2), an element shall generally be

considered as being equivalent to an element as

expressed in a claim if, at the time of any

alleged infringement, it performs substantially

the same function in substantially the same way

and produces substantially the same result as the

element as expressed in the claim, and 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.

(3) [Prior Statements] In determining the

scope of protection, due account shall be taken of

any statement limiting the scope of the claims

made by the applicant during procedures

concerning the grant or the validity of the patent.]

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[Rule 11, continued]

(4) [Examples] If the application contains

examples of the embodiment of the invention or

examples of the functions or results of the

invention, the claims shall not be interpreted as

limited to those examples; in particular, the mere

fact that a product or process includes additional

features not found in the examples disclosed in the

patent, lacks features

found in such examples or does not achieve every

objective or possess every advantage cited or

inherent in such examples shall not remove the

product or process from the scope of protection

conferred by the claims.

(5) [Abstract] The abstract shall not be

taken into account for the purpose of determining

the protection conferred by the claims.

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Cabinet Beau de Loménie

CONSEILS EN PROPRIETE INDUSTRIELLE

Doctrine of ivalent e

(1) DEFINITION

A product or a method is considered as a

technical equivalent to a patented product or to a

patented method if, being similarly applied, it

reproduces the function of the claimed means with a

view to obtain the same result or a result of similar

nature, while having a different form or structure.

(2) APPLICATION OF THE DOCTRINE OF

EQUIVALENTS TO ASSESSMENT OF

INFRIN T

(a) It is assumed that a patent claim covers

particular means characterised by its form, by its

application and by its function within the frame of that

application.

It is also assumed that an alleged infringing

object, being similarly applied, provides the same

function, leading to a similar result, but has a different

structure or form.

The Judge will first determine whether the

function of the clainned means is new.

If the function is not new, i.e. if the prior art

shows that means were already known which carried out

the same function to provide a similar result, then there

can be no infringement, because the claims cover only

the particular form or structure and the scope of the

claim cannot be extended to cover the function.

If the function is new, then there is infringement.

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The above has been constantly assessed by

French Courts. For instance, in Bennes Saphen v/s

Guina et al. (Paris Appeal Court, December Ist, 1988) :

“...an invention being characterised by its form,

by the application thereof and by its function, when the

function is not new and when, by way of consequence,

the patent cannot protect it, means having a different

implementation form and carrying out the same function

as the claims means cannot constitute an infringement

by equivalence, the result not having to be taken into

consideration”.

The above decision has been confirmed by the

Supreme Court (Cour de Cassation) on December 4,

1990:

“It is rightfully that a decision has dismissed an

allegation of infringement by equivalence, having stated

that the combination of means of the invention carries

out a known function, and that the patent could only

cover that combination in its particular form, and having

checked that the alleged infringing device, although

having the same function, had a structure different from

the one claimed by the patent”.

Thus to be held infringing, it is not sufficient that

a device or a process be equivalent to a claimed device,

or process (i.e. has the same function when applied in a

similar way to achieve a similar result) ; it is also

necessary that the function of the claimed device or

process be in itself novel.

-— oe

.

(b) ‘It is assumed that a patent claim covers a

particular combination of features which is new and

inventive.

It is also assumed that an alleged infringing

object reproduces the same combination of features

except one (or several) being different in its (or their)

form.

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If it can be shown that the concerned feature of

the alleged infringing object, although having a different

form, is equivalent to a corresponding feature of the

claimed invention, then infringement will be stated.

It is not then required to show that the function

of that particular feature is new in itself. It is only

necessary that this particular feature carries out the same

function as a corresponding feature of the claimed

combination, and co-operates with the other features in a

similar way.

© Cabinet Beau De Loménie, 1999

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PTO COMMISSIONER TO HOST ONLINE DIALOG

http://www.uspto.gov/web/offices/com/speeches/00-

16.htm

PRESS RELEASE #00-16 CONTACT: Brigid Quinn

March 2, 2000 Kim Byars

703-305-8341

1999 PATENT STATISTICS ANNOUNCED

In calendar year 1999, the U.S. Patent and

Trademark Office (PTO) granted record 169,154

patents, including 153,493 utility (inventions), 14,732

design, and 421 plant patents. In calendar year 1998,

PTO issued 163,208 patents.

U.S. resident inventors received 55.6% of all

U.S. patents in 1999. California resident inventors

claimed a 20.0 percent share (18,865 patents) of these

patents, followed by inventors from New York (7.3

percent, 6,900 patents), Texas (6.8 percent, 6,424

patents), New Jersey (4.6 percent, 4,372 patents), and

Illinois (4.6 percent, 4,308 patents). Inventors in Puerto

Rico, Idaho, South Dakota, Kentucky, Arkansas,

Kansas, and Wyoming had the largest percentage

increases in patents from 1998 to 1999.

“The ingenuity and creativity of American

inventors has established the U.S. as the technological

leader among nations, fueling this country’s longest

economic expansion,” noted Q. Todd Dickinson,

Assistant Secretary of Commerce and Commissioner of

Patents and Trademarks.

Forty four percent of U.S. patents were issued to

residents of foreign nations. The ten foreign countries

that received the most U.S. patents during calendar year

1999 are displayed below. For more statistics, please

visit

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http://www.uspto.gov/web/offices/com/speeches/pattr99

.pdf

1999 1999 Share of (1998) (1998 to 1999)

(Rank (Change .

# All in (# in #

Rank | Patents | Patents Country* 1998) | Patents) | Patents)

1 32,515 19.2% Japan (1) (32,119) | (+1.2%)

2 9,896 5.9% Germany (2) (9,582) (+3.3%)

3 4,526 2.7% Taiwan (4) (3,805) | (+18.9%)

4 4,097 2.4% France (3) (3,991) (+2.7%)

5 3,900 2.3% United (5) (3,726) (+4.7%)

Kingdom

6 3,679 2.2% South (7) (3,362) (+9.4%)

Korea

7 3,678 2.2% Canada (6) (3,537) (+4.0%)

8 1,686 1.0% Italy (8) (1,820) (-7.4%)

9 1,542 0.9% Sweden (it) | (1,346) | (+14.6%

10 1,396 0.8% | Netherlands (9) (1,382) (+1.0%)

*Please note that the country of origin is determined by

the residence of the first-named inventor.

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APO Manual Of Practice And Procedure

IP Australia

PATENTS-T RADEMARKS-DESIGNS

3.10 DOCTRINE OF MECHANICAL EQUIVALENTS

3.10.1 The task of the court in considering

anticipation was explained in General Tire & Rubber Co

v The Firestone Tyre & Rubber Co Ltd, (1972) RPC 457

at page 485, as follows:

“To determine whether a patentee’s claim

has been anticipated by an_ earlier

publication it is necessary to compare the

earlier publication with the patentee’s

claim ... The construction of these

documents is a function of the court,

being a matter of law, but, since

documents of this nature are almost

certain to contain technical material, the

court must, by evidence, be put into the

position of a person of a kind to whom the

document is addressed ....”

3.10.2 In the course of dealing with an objection

to grant for want of novelty, the courts have had regard

to the doctrine of mechanical equivalents. That is,

whether, on the evidence before the court, the difference

between the claimed invention and the alleged

anticipation represented no more than the substitution of

an inessential feature with an obvious equivalent.

See e.g. R D Werner & Co Inc v Bailey Aluminium

Products Pty Ltd, (1989) 13 IPR 513.

(It may be noted that the courts appear to have taken the

view that if a feature of the claim has a mechanical (i.e.

functional) equivalent in the alleged anticipation, then

ipso facto the feature must be inessential. Furthermore,

the existence of mechanical equivalents has been

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determined from evidentiary material (which generally

would not be available to examiners), and not as a

matter of construction.)

3.10.3 In any event, the real issue to decide when

using the reverse infringement test to judge lack of

novelty is whether a prior disclosure contains a clear

description of, or clear instructions to make, something

that possesses all the essential features of the claim. For

this reason, examiners should not concern themselves

whether an inessential feature of the claim replaces a

feature of the prior art disclosure with a mechanical

equivalent.