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

cy Supreme Court, U.S.

AUG $0 200] ‘genet 2001

Supreme Court of the Urfiten States

2: So

FESTO CORPORATION,

Petitioner,

—V),——

SHOKETSU KINZOKU KOGYO KABUSHIKI Co., LTD..,

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

Respondents.

_ ON 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 PETITIONER

R. DANNY HUNTINGTON MAXIM H. WALDBAUM

RAYMOND C. STEWART Counsel of Record

JOHN P. SUTTON Lor! D. GREENDORFER

TIPTON D. JENNINGS IV SALANS HERTZFELD HEILBRONN

Fédération Internationale Des CHRISTY & VIENER

620 Fifth Avenue

Conseils En P iété

5 Wes lta New York, New York 10020

(212) 632-5500

Counsel for Amicus Fédération

Internationale Des Conseils

: ‘el

: 30, 2001 En Propriété Industrielle

At

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),

cert. granted, 121 S. Ct. 2519 (2001) (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

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?

ii

TABLE OF CONTENTS

Page

Interest Of The Amicus Curiae................ccccccccceseeeeeeees l

Summary Of The Argument ..................ssscscssssssssseseeees 3

STII scinsiadonecssnenicitebadsieddvecsennnannindneniatinneantnegteianenns a

Bie Ht ticcsbcinisnmsnniiictircntensdocreasubintindiinteatinabestaneen +

B. Festo Should Be Reversed On the Grounds That The

Complete Bar Rule Will Harm Innovation and Global

Intellectual Property Protection And Will Create An

Armageddon For Patent Values ..................cccccsceesseeeeeees 9

C. Festo Should 3e Reversed On The Ground That

The Complete Bar Rule is Unworkable ................ 16

D. Festo Should Be Reversed On The Grounds That

The Complete Bar Rule Is Contrary To This

Court’s Precedent And An Unprincipled

Departure From Federal Circuit Law ................... 25

SERS SW air nee i NSS a 28

ill

TABLE OF AUTHORITIES

CASES

Aclara Biosciences, Inc. v. Caliper Tech. Corp.,

125 F. Supp. 2d 391 (N.D. Cal. 2000)............. 19-21

Autogiro Co. of Am. v. United States,

es CE, Ga, IO ercncscccenseccenneccesennees 6,17

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 558 (Fed. Cir. 2000), cert. granted,

a TT cer eennemenenapnenitenmeenensnnignnnns 6

Control Resources, Inc. v. Delta Elecs., Inc.,

133 F. Supp. 2d 121 (D. Mass. 2001)................0. 23

Creo Prods. Inc. v. Presstek, Inc.,

No. C.A. 99-525-GMS, 2001 WL 637397

SS ee 18-20

Festo Corp. v. Shoketsu Kinzoku

Kogyo Kabushiki Co.,

234 F.3d 558 (Fed. Cir. 2000), cert. granted,

4 Ee passim

Georgia-Pacific Corp. v. United States

Plywood Corp.,

318 F. Supp. 1116 (S.D.N.Y. 1970),

modified on other grounds,

446 F.2d 295 (2d Cir. 1971) ........ccceccceeeeeeeeeeeeeeees 22

iv

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

es Ce I enaictctnniinsnatntnasiabicniniiatitl passim

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

62 F.3d 1512 (Fed. Cir. 1995),

rev'd on other grounds,

en 14

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

78 F.3d 1575, 1578-81 (Fed. Cir. 1996) ............... 17

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), cert. granted,

ee ie ih Sr IED cecntensnstecerenicnnnintintaianentetenees 6

Mycogen Plant Science, Inc. v. Monsanto Co.,

Civ No. 00-1127, 2001 WL 910389

re Ga I Be Bee iececctccnnenccntnccustenatenenenens 21

Polaroid Corp. v. Polarad Elecs. Corp.,

2B7 F.26 452 (26 Cit. 1961).......cccccccccccccccccssccccess 22

Read Corp. v. Portec, 970 F.2d 816

ee Gees Ce incinccctnpsnnptninticanntepemnciiiemamamedanate 22

Warner-Jenkinson Co. v.

Hilton-Davis Chem. Co..,

ye icctirtictenrcintictbacindticinsiiliniaiadhiaiiel passim

Wilson Sporting Goods Co. v. David Geoffrey &

Assocs., 904 F.2d 677 (Fed. Cir. 1990)............... 5, 6

STATUTES, RULES AND CONSTITUTIONAL

PROVISIONS

Se 5

OE 5,6

Te ee 5

tg |), 5

i |) 5

TE), 5

9B URBAC. 6 FBG ccccccsccccccssecccscsseeseccscessvscssscssssessees 22

U.S. Comat., ant. 1, § &, OF. & ............cccccccccrcccccccocees 4

Sup. Ct. Rube 37 ...........cccccccccccroreresesecsoesescsssessosses l

MISCELLANEOUS

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

wipo/en/ Detml. ...........0.....cccscrrssseseereserseneeesssssonsees 2

Act Revising the Convention on the Grant of

European Patents Nov. 29, 2000,

ee 15

Agreement on Trade-Related Aspects of

Intellectual Property Rights,

April 15, 1994, 33 LL.M. 81 ............cc:cceeeeees passim

Sheila F. Anthony, Antitrust and Intellectual

Property Law: From Adversaries to Partners,

28 AIPLA Q.J. 1 (Winter 2000) .....................20000 10

David Bannerman & Chris Hamer, “Different

Approaches to the “Doctrine of Equivalents”

in Germany, UK, US and Japan”

AIPPI Journal 82 (Mar. 2000) ..............cccccccceeeees 14

Brief for the United States as

~ Amicus Curiae, 1996 WL 172221

Se ts iin SI farticiiclonnintinnicsasaninienibemritaiaias 14, 15

Center For Advanced Study On Intellectual

Property, The University of Washington

School of Law, Comments For Issues (2001),

at http://www.uspto.gov/weboffices

/dcom/olia/ harmonization .........................000+. 12, 13

European Patent Convention Art. 69,

Br is We easiasdtsienendordilnnencdsntidantatienienstnenses 14, 15

Petition for Writ of Certiorari of

Festo Corporation (U.S. Apr. 9, 2001)......... 7, 17, 26

Request for Comments On the International

Effort to Harmonize the Substantive

Requirements of Patent Laws,

66 Fed. Reg. 15409

a Wi GI dtencntecnencenisectncenrsenesutintianetnnaaions 16

INTEREST OF THE AMICUS CURIAE

Fédération Internationale Des Conseils En

Propriété Industrielle (“FICPI”) respectfully submits

this brief, as amicus curiae, in support of Petitioner

Festo Corporation.’ FICPI supports reversal of that

portion of the decision in Festo Corp. v. Shoketsu

Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 574

(Fed. Cir. 2000), cert. granted, 121 S. Ct. 2519 (2001)

(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

'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.

intellectual property matters and secure protection for

industrial innovation. FICPI supports the uniform

global protection of patents, and the interests of

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 attendea

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. Alternatively, if inventors do decide to

seek patent protection for their inventions, they are

less likely to seek protection in the U.S., and therefore

the invention is less likely to enter the U.S. market.

Second, the rule 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 sends a message to the

international community that U.S. patent law is

subject to sudden, sweeping changes, and operates as a

disincentive to file patent applications in the U.S.

because of the perceived volatility in U.S. patent law.

This message is inconsistent with the United

States’ status as a world leader in technology, its

interest in stimulating and encouraging technological

innovation, and its commitment to the goal of global

harmonization of patent laws. FICPI thus urges this

Court to reverse that portion of the Festo decision that

established the Complete Bar Rule.

SUMMARY OF THE ARGUMENT

The American patent system is founded upon the

interest in encouraging the creation of, and investment

in, innovative technology, which requires the

participation of and cooperation with 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), have adhered to a

flexible bar. As discussed below, the Fest. majority’s

dramatic shift to a complete bar conflicts with this

Court’s precedent and unjustifiably departs from

settled Federal Circuit precedent. The equitable and

policy considerations that gave rise to the doctrine of

equivalents have been forsaken by the Festo court in

the interest of providing a so-called bright line rule

and greater certainty in the law. However, as

discussed, infra, the rule is not easy to apply nor does

it enhance certainty in infringement lawsuits.

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, 9f 1 & 2, 33 LL.M. 81 (hereinafter

“TRIPS”). TRIPS applies to patents. Jd. art. 27. As

discussed below, the Complete Bar Rule is

inconsistent with these obligations, as well as with 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 negotiation

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 (generally)

from the date the application was filed. See 35 U.S.C.

§§ 154, 271.

The doctrine of equivalents is a theory of patent

infringement which 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 & Mfg. Co. v. Linde Air Prods. Co., 339

U.S. 605, 608 (1950) (“Graver Tank’) (quoting

Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42

(1929)); see also Warner-Jenkinson Co. v. Hilton-

Davis Chem. Co., 520 U.S. 17, 29-30 (1997) (refining

and reaffirming the doctrine of equivalents); Wilson

Sporting Goods Co. v. David Geoffrey & Assocs., 904

F.2d 677, 684 (Fed. Cir. 1990) (explaining that “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). However, the doctrine is

applied restrictively and only to prevent “fraud on a

patent.” Graver Tank, 339 U.S. at 608.

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

tne application of the doctrine of equivalents when an

amendment has narrowed the scope of a claim for a

reason related to patentability.” 234 F.3d at 574. 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

effectively abolish the doctrine. Because almost every

patent application is amended, a 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 Festo, 234

F.3d at 574; see also Hughes Aircraft Co. v. United

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

(“[aJmendment of claims is a common practice”),

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” 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 permissible set of claims.

Festo, 234 F.3d at 618 (Michel, J., dissenting); see

also Petition for Writ of Certiorari of Festo

Corporation (U.S. Apr. 9, 2001) (“Pet. Mem.”) at 25.

The notice function, served by a literal approach

to patent claims, enhances competition by permitting

others to “design around” the claims. Festo, 234 F.3d

at 577. However. the doctrine of equivalents serves an

equally if not more important function by discouraging

“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 (see Warner-

Jenkinson, 520 U.S. at 28-30, 33-34; Pet. Mem. at 4-6,

11, 14-15), likely will directly and globally affect the

patent’s scope and value. Further, domestic and

foreign licensees of U.S. patents also are affected by a

retroactive law that devalues a patent. Festo, 234 F.3d

at 619 (Michel, J., dissenting).

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, the rule significantly devalues any unexpired

patents that were 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 9-11. Fourth, the rule does

not enhance certainty of claim interpretation (cf.

Festo, 234 F.3d at 576-77), because it will require

patentees to draft claims with additional, unnecessary

language, and to add claims in order to compensate for

the loss of equivalents, with the added result of

inordinately costly and “protracted prosecution.” Jd. at

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

in the prosecution process (rather than the more time

consuming and costly procedure of appealing

Examiner rejections to the back-logged PTO Board of

Patent Appeals (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 the broad definition

of patentability provided by the Festo majority. Jd. at

633-34 (Newman, J., dissenting). 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, { 2.

B. Festo Should Be Reversed On The Grounds

That The Complete Bar Rule Will Harm

Innovation And Global Intellectual Property

Protection And Will Create An Armageddon

For Patent Values

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). In contrast, 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.” Jd. at 639. In fact, studies indicate that a

bright line rule negatively impacts industrial

innovation. Jd. 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.” Jd. 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

10

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 (citing authority). The Festo majority, however,

did not consider the costs incurred, or risks taken, by

innovators in new markets, particularly given the

global economy. See id. at 640; see also Sheila F.

Anthony, Antitrust and Intellectual Property Law:

From Adversaries to Partners, 28 AIPLA Q.J. 1, 3

(Winter 2000) (“in today’s global economy,

companies must innovate if they hope to survive and

thrive. . . . Innovating companies .. . all depend

vitally on a legal framework that ensures a

competitive market while protecting the rights of

inventors and allowing innovators to profit from their

ideas and inventions.”).

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. Festo, 234 F.3d at 640

(Newman, J., dissenting). In addition, the Complete

Bar Rule prohibitively increases the costs to

“individual inventors and start-up companies.” Jd. 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 broad claims and appealing, rather than

amending in response to, rejections. Jd.

The end result will be to impede rather than to

advance “technological progress.” Jd. In effect, under

Festo, the U.S. is not providing the incentives for

a eS

ll

technological innovation that it purports to encourage

in its dealings with other countries under TRIPS and

in discussions led by WIPO concerning substantive

patent harmonization (see discussion, infra, at 16 and

note 2), as a means to further global protection and

support of innovation. 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 theory, without briefing

or argument.” 234 F.3d at 642 (Newman, J.,

dissenting).

Moreover, 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 on a global

scale. 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”). In addition, the U.S. marketplace will suffer

from the Festo decision because inventors who choose

to file for patent protection will have less incentive to

file applications in the PTO, and thus will be less

likely to introduce technological innovations into this

market.

For these reasons, the Complete Bar Rule also

will negatively impact the goal of global

harmonization of patent laws, both with respect to

prosecution and infringement procedures. At least one

12

commentator has noted that, although the doctrine of

equivalents applies at the infringement stage rather

than the prosecution stage, it “indirectly relates to the

examination procedure. because the availability of the

doctrine affects the literal scope of claims that the

patent system should select for accomplishing patent

policy.” See Center for Advanced Study on Intellectual

Property, The University of Washington School of

Law, Comments For Issues 25 (2001), at

http://www. uspto.gov/weboffices/dcom/olia/

harmonization (hereinafter “Comments for Issues”’).’

The Complete Bar Rule “undermines the well-

established practice under a first-to-file [priority]

model” (id. at 26), followed by many European

countries, which provides that “an invention must be

new and nonobvious when it is filed with a patent

office” and that “[a]ny disclosure of an invention

forfeits the right to patent.” See id. at 1-2 (citing

European Patent Convention (“EPC”) Art. 54). This

model encourages a patent applicant to file as soon as

his invention is completed, even if it is later necessary

to fine tune claims or the invention itself during

prosecution. See id. at 26. Further, given this model,

many inventors file pror to consulting a patent

attorney, increasing the likelihood of the necessity of

? These comments were provided in response to a

notice published in March 2001 in the Federal

Register by the Department of Commerce (Patent and

Trademark Office), seeking commentary concerning

the WIPO Draft Substantive Patent Law Treaty (the

“SPLT”), which is U.S. supported and provides for an

equivalents doctrine consistent with pre-Festo law.

See discussion, infra, at 16.

——--— —- _—

13

later claim refinement. Jd. Those countries which

operate under a first-to-file model “presume the

abandonment of these applications and imperfect

claims in original applications . . . [and] guarantee

applicants the mght to amend claims without any

ate ow even if the original claims are

imperfect.” Jd.

Additionally, “[t]his practice makes it possible to

disclose inventions early . . . and helps small inventors

and public research organization(s] by enabling them

to file an application by themselves.” Jd. Given the

first-to-file model, the Complete Bar Rule particularly

penalizes foreign applicants who file in the U.S. after

first filing outside the U.S., and (as is routine), amend

their claims, because they likely will be barred from

asserting a doctrine of equivalents theory in a U.S.

lawsuit with respect to the narrowed claims. /d.

Moreover, “a mere clarification of language from

a foreign translation may give rise to estoppel if the

clarification results in a narrower literal scope with

respect to the amended claims compared with that of

original claims.” Jd. at 27 (citing Festo, 234 F.3d at

622 (Linn, J., dissenting)). Given the increasingly

complex concepts and claim language of new

technology and the difficulty of translating foreign

descriptions of such complex technology, “foreign

applicants are more vulnerable to the complete bar ...

rule.” Comments for Issues, supra, at 27. Such a

scenario is inconsistent with the goal of encouraging

inventors to make ““leapfrogging advances” in their

respective fields (Festo, 234 F.3d at 640 (Newman, J.,

dissenting)‘ and to disclose their inventions to the

PTO rather than protecting them as trade secrets.

14

The rule also is inconsistent with the United

States’ encouragement of foreign nations that provide

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

protection commensurate with ihat 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. v. Warner-Jenkinson Co., 62 F.3d

1512, 1531 (Fed. Cir. 1995) (Newman, J., concurring),

rev'd on other grounds, 520 U.S. 17 (1997).

For example, 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 EPC’s goal of harmonizing patent laws. EPC

Article 69 notes the need to consider, in interpreting

15

?

patent claims, 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.

For all these reasons, the Complete Bar Rule will

create an imbalance in patent values between the U.S.

and major foreign countries and force foreign

applicants 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 under U.S.

law as opposed to the laws of other countries may

encourage domestic companies to shift their

technological focus abroad. This imbalance 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.

The rule also is inconsistent with the United

States’ significant efforts, as a WIPO and SCP

16

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, which is U.S.

supported and provides for a doctrine of equivalents

consistent with pre-Festo law, is a product of such

international efforts. See Request for Comments On

the International Effort to Harmonize the Substantive

Requirements of Patent Laws, 66 Fed. Reg. 15409

(Mar. 19, 2001) (requesting comments on the SPLT);

A-1-8, 10-14, 16-21 (attaching excerpts of, and

commentary concerning, the SPLT).

C. Festo Should Be Reversed On The

Ground That The Complete Bar

Rule Is Unworkable

As discussed, supra, 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. This section considers whether

the policies that Festo sought to protect are, first, in

fact protected by the Complete Bar Rule and second,

whether they outweigh the policies of international

harmonization of patent laws and encouraging

innovation on a global scale.

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 prosecution

17

history. Jd. 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.” Jd. Second,

competitors are protected by a _ reasonableness

standard, i.e., “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

Warner-Jenkinson Court’s refinement of the doctrine

ensures that third parties are not burdened with

determining the meaning of omissions from the

prosecution history. See Warner-Jenkinson, 517 U.S.

at 33-34; Pet. Mem. at 5, 17.

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. Festo, 234 F.3d 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. Jd. at 575. As

noted, however, a literal approach also is vulnerable to

varied interpretations of claim language. Moreover,

18

courts applying the Complete Bar Rule have found it

unworkable. As the court in Creo Prods. Inc. yv.

Presstek, Inc., No. C.A. 99-525-GMS, 2001 WL

637397, at *7 (D. Del. May 11, 2001) noted, “fi]n the

immediate aftermath of Festo, district courts (and

litigants) are struggling to interpret its breadth and

applicability,” in part because “[w]hile the Festo

decision purports to eliminate uncertainty regarding

the reach of prosecution history estoppel, it raises

other uncertainties as to the application of the decision

itself . . . . [including] the reach of the phrase ...

substantially related to patentability.’” Jd. at *9 n.21

(internal quotations omitted) (quoting Bruce J. Rose &

John A. Wasleff, Was Festo Really Necessary?, 83 J.

Pat. & Trademark Off. Soc’y 111, 127 (Feb. 2001)).

Two courts applying Festo have carved out

exceptions to the Complete Bar Rule to avoid its

potentially draconian results, reasoning that such

exceptions served the notice function, the Festo

court’s main justification for the Rule. In Creo

Products, 2001 WL 637397, at *1, *6, involving a

patent for a direct press imaging system, the alleged

infringer, seeking summary judgment of non-

infringement, claimed that the patentee’s amendment

of the claim at issue barred all equivalents as a matter

of law under Festo. Jd. at *6-7. The court denied

summary judgment, finding that the narrowing

amendment at issue, while made to overcome the prior

art, did not trigger the Complete Bar Rule. Jd. at *10-

12.

Specifically, the court held that the amendment

explicitly concerned the “movement of the imaging

head” (id. at *9), and only implicitly concerned the

resulting swath created by the motion (the limitation

at issue), even though the Examiner, in rejecting the

—— —

es

19

claim, addressed both the motion of the imaging head_

and the resulting image. Jd. at *8-10. Cf id. at *8

(noting that the patentee claimed that the Examiner

was concerned more with the motion of the imaging

head than the image resulting from the motion). The

court declined to apply the Complete Bar Rule to the

“implicit” portion of the amendment, reasoning that

the public notice function — the underlying policy of

the rule — would not be served by applying the rule to

“implicit changes in a limitation.” Jd. at *9-10.

As the court explained, applying the Complete Bar

Rule to such implicit changes:

would result in giving accused infringers

a virtually unlimited weapon with

which to attack otherwise valid patents

and avoid otherwise ~ infringing

activities. Until directed otherwise, the

court declines to sanction such a result.

The court believes doing so would

violate the spirit, if not the letter, of the

Federal Circuit’s holding in Festo.

Id. at *10. Another district court, declining to

find the Complete Bar Rule triggered by a claim

amended for a patentability reason, likewise found

that Festo did not address a particular factual scenario

concerning claim amendments. See Aclara

Biosciences, Inc. v. Caliper Tech. Corp., 125 F. Supp.

2d 391, 398-401 (N.D. Cal. 2000) (“Aclara’’).

Specifically, the court explained, Festo did not address

whether, if one portion of a clause in a claim is

amended such that it triggers the Complete Bar Rule,

then the other (unamended) portions of the clause also

trigger the Rule. /d.

Finding that the Complete Bar Rule was not

20

triggered with respect to the other portions of the

amended clause, the court reasoned, “[e]xtending the

logic of Festo to an entire clause in a claim when only

a portion of that claim has been amended . . . does not

advance” the public notice function. /d. at 401. The

court also found that the Festo court provided no

“explicit direction” in the situation where it is unclear

whether claim language at issue involves one, or a

“series of limitations,” each of which apparently

would be subject to a separate Festo analysis. Jd. The

Aclara court further stated: “Adopting a rule that any

amendment to any portion of a clause in a claim

creates prosecution history estoppel as to the entire

clause and not just the portion of the clause that was

amended would do little to promote the purposes of

the complete bar approach.” /d. at 402. These

decisions reveal the district courts’ struggle to avoid

the often harsh results of the Complete Bar Rule by

carving out policy-based exceptions in factual

scenarios which (these courts claim) were not

addressed by the Festo majority. The result, however,

creates uncertainty when courts make ad hoc

determinations concerning the scope of, and

exceptions to, the Complete Bar Rule.

For example, distinguishing between “explicit”

and “implicit” claim amendments (as in Creo

Products), when the Festo court made no such

distinction, likely would require a_ subjective

interpretation of the claim language at issue, as well as

extrinsic evidence supporting that internretation —

both results which the Festo court apparently hoped to

avoid in its bright line approach. See Creo Prods.,

2001 WL 637397, at *8 (discussing the patent holder’s

interpretation of the reason underlying the narrowing

amendment). Likewise, as in Aclara, the decision of

- —— ll a

21

whether a clause of a claim is comprised of separate

segments, and whether only one segment was

narrowed by the amendment, also detracts from the

increased certainty desired and predicted by the Festo

court, because the prosecution history may be unclear

concerning the treatment of the clause at issue. See

Aclara, 125 F. Supp. 2d at 401.

Indeed, relying on Festo, the Federal Circuit may

have inadvertently extended the Complete Bar Rule to

apply to claims which were neither narrowed by

amendment nor introduced as narrower replacement

claims, because the bright-line approach left no

discretion to the court to examine the context of the

claim language. See Mycogen Plant Science, Inc. v.

Monsanto Co., Civ No. 00-1127, 2001 WL 9103839, at

*1, *4-5 (Fed. Cir. Aug. 14, 2001). Thus, these cases

reveal the uncertainty resulting from an attempt to

impose a bright line approach on a fact-specific issue.

Accordingly, if courts are baffled by the reach of

the Complete Bar Rule despite its seemingly “bright

line” approach, foreign patentees likely will also have

difficulty drafting and amending (or even simply

translating) patent claim language in order to avoid

triggering the Rule. In addition to the increased time

and costs associated with drafting an application in

light of the Complete Bar Rule, foreign applicants

likely will be reluctant to file in the U.S. and risk

devaluing their patent nights.

In contrast, as noted, a flexible bar rule is

consistent with the patent practice of major foreign

countries and will promote uniformity in patent

practice on a global scale. It also is consistent with our

legal system’s fact-specific application of legal rules

and doctrines. Indeed, there has been no call for

22

bright-line rules in trademark or copyright law, or tort

and securities laws, or even other areas of patent law,

despite the potential for varied outcomes in those

areas because of fact-based inquires’ and

reasonableness standards. See, e.g. Polaroid Corp. v.

Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.

1961) (listing eight factors relevant to a likelihood of

confusion analysis in a trademark infringement case

and noting that “the court may have to take still other

variables into account”); Georgia-Pacific Corp. v.

United States Plywood Corp., 318 F. Supp. 1116,

1120-21 (S.D.N.Y. 1970) (listing fifteen factors

relevant to evaluating the amount of damages to be

awarded to a prevailing patent holder in an

infringement action, explaining, “there is no formula

by which these factors can be rated precisely in the

order of their relative importance;” rather, the court

must “exercise a discriminating judgment reflecting its

ultimate appraisal of all pertinent factors in the

context of the credible evidence”), modified on other

grounds, 446 F.2d 295 (2d Cir. 1971); Read Corp. v.

Portec, Inc., 970 F.2d 816, 826-28 (Fed. Cir. 1992)

(listing nine factors relevant to determining whether to

award, and, if awarded, the extent of, enhanced

damages pursuant to the Patent Act, 35 U.S.C. § 284);

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.’”). Thus, 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

other substantive legal areas that involve fact-based

inquiries.

23

As the court in Control Resources, Inc. v. Delta

Elecs., Inc., 133 F. Supp. 2d 121 (D. Mass. 2001)

stated, explaining that the Complete Bar hKule is

inconsistent with the district court’s fact-finding role:

“litigation” and “case by case analysis”

is the very raison d'etre of the district

courts. Courts of statutory jurisdiction,

which embody America’s rich common

law tradition, daily bring to expressive

life for juries of common sense

America’s broadest philosophic legal

concepts -- concepts such as “reasonable

doubt,” “proximate cause,” "scienter,”

and “negligence.”

Id. at 124. In Control Resources, the court held that

the Complete Bar Rule was automatically triggered

where the claim language at issue had been narrowed

to overcome the prior art. /d. at 136. The court noted,

however, that “[s]uch a cursory examination of the

prosecution history . . . seems ill-suited to undergird

such a dramatic result. Prior to Festo, the work of

counsel and the court would have just begun. Jd. The

court noted, in dicta, that a pre-Festo review of the

prosecution history would “compel[] the conclusion”

that plaintiff through its claim amendment did not

abandon the entire range of equivalents. /d. at 136-37.

Indeed, the distinction made by the Festo majority

between amended and original 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 is 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

24

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

uniform global protection and enforcement of patents.

The Complete Bar Rule also unjustly frustrates the

expectations of inventors and patentees worldwide,

and the PTO, all of which rely on the availability of

some range of equivalents even when claims are

narrowed in response to rejections. Jd. at 618

(Michel, J., dissenting); Warner-Jenkinson, 520 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. Jd. 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. Jd. at 624 (Linn,

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

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

ee ee

ll. ie ll a ie

25

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 SPLT).

In contrast, the Festo majority did not consider the

Warner-Jenkinson Court’s careful balancing of

controls (see Warner-Jenkinson, 520 U.S. at 33-34;

40-41), 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 tech:iological innovation,

as discussed, supra.

D. Festo Should Be Reversed On The Grounds

That The Complete Bar Rule Is Contrary

To This Court’s Precedent And An

Unprincipled Departure From Federal

Circuit Law

This section addresses the Festo majority's

departure from, and conflict with, settled precedent,

against the backdrop of the international effort to

globalize patent laws, as well as the U.S government's

responsibilities under TRIPS. 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. /d. at 608-09

26

(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). Moreover, the Festo majority did not

explain the error in any of the prior decisions applying

a flexible bar. Jd. at 612, 619.

The Complete Bar Rule is inconsistent with

settled precedent on additional grounds. First, 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., dissenting). Second, 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:

“(filexibility rather than rigidity has distinguished

[equity jurisdiction]”). “Without this flexibility, courts

are precluded from protecting patentees from

copyists.” Jd.; cf. TRIPS, art. 41, JJ 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

27

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 nd

substitutions in the patent which, though adding

nothing, would be enough to take the copied matter

.. . Outside the reach of law”).

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. Festo, 234 F.3d at 627-28 (Linn, J., dissenting).

However, the concerns underlying these dire

predictions are misplaced, and, significantly, have not

come to pass. /d. If this Court does not reverse Festo,

leaving the Complete Bar Rule 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 abroad; and (4) directly harm the

28

role of the U.S. as a world leader in technological

innovation.

CONCLUSION

For all of the foregoing reasons, the decision of

the Federal Circuit in Festo should be reversed.

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 Conseils En

New York, New York Propriété

10020 Industrielle

August 30, 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 Pateni

DD ccencusdnsedeencndnnnnneenenmnanmnermmmmasnnnslnnentnernantmnese A-1

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 ................sscesseeeeeees 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

Propriété Industrielle).....................0++ Siepenpnenmenete A-22

1999 Patent Statistics Announced

(Press Release #00-16, Mar. 2, 2000)..............00000+8 A-25

Doctrine of Mechanical Equivalents

(IP Australia, APO Manual of Practice &

PeOOOBUIS) ocicccccccccccsccccccsccccccecesccnssosoccescsssoossescsoeses A-27

A-1

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

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 harmoftization for

consideration 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.”

At

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 cavailable 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 skilled 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 Harmonization 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.

S F} a

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 differeat 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.

(ec) Certain patent systems provide for restrictions on

i i d to a high

the dependency of sub-claims, which lea

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.

I ion of clai

(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) Im 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.

(¢) 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: Articles 4 (“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”).

TV. 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

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 .ze 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 ]

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.

A-15

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 to[:

(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]

A-16

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 Alteraative 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}

A-17

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]

A-18

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

A-19

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).

A-20

Rule 11

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.]

A-21

[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.

A-22

Cabinet Beau de Loménie

CONSEILS EN PROPRIETE INDUSTRIELLE

Doctrine of equivalents in France

(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

INFRINGEMENT_

(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 claimed 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.

A-23

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.

(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.

A-24

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 wi!] be stated.

It is not then required to show .aat 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

A-25

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

i999 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

A-26

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)

! 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 (5S) (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 (Il) | (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.

A-27

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 Lid, (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

A-28

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.