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Friday March 09, 2001
Patent Law Update: December 2000
Executive Summary
THE FESTO CASE HAS DRAMATICALLY CHANGED U.S. PATENT LAW
What the Festo decision says: Any time a claim limitation is narrowed for any reason related to the statutory requirements for a patent, prosecution history estoppel precludes the application of the doctrine of equivalents for the amended claim limitation. Thus, to prevail in an infringement action, a patentee must now prove that amended claim limitations are literally satisfied. The rationale expressed by the court for this decision is to provide the public with clear notice of the claimed subject matter by eliminating any uncertainty regarding the scope of amended claim limitations.
What the Festo decision means: A competitor can avoid infringement by making an insubstantial change to a claim limitation that has been the subject of a "narrowing" amendment during prosecution. So long as the competitor makes a single change, no matter how trivial or insubstantial, that avoids the literal scope of an amended claim limitation, "[e]very other detail of the patented invention may be imitated with impunity." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 2000 WL 1753646, at *75 (Fed. Cir. Nov. 29, 2000) (Linn, J., concurring-in-part, dissenting-in-part). Before the Festo case, amended claim limitations were entitled to a range of equivalents encompassing insubstantial changes, provided the subject matter sought to be captured was not surrendered during prosecution.
What should be done in response to the Festo decision? The Festo decision changes the scope of all claims in unexpired patents that include limitations that were narrowed by amendment during prosecution. Accordingly, patent owners should review the prosecution history of important patents that have issued within the past two years to identify claims that include amended limitations. In some situations, it may be desirable to broaden the literal scope of such limitations through reissue of the patent. Patent licensees should review the prosecution history of each licensed patent to determine whether practice of the claimed invention can be avoided by making a minor change that avoids the literal scope of an amended limitation.
Patent applicants should review all pending nonprovisional applications filed within the last year to determine whether the claims need to be reworked in light of the Festo decision. In cases where sufficient information is available to determine that the claims will likely have to be amended during prosecution, patent applicants may want to consider using the following procedure: 1) convert the nonprovisional application with pre-Festo claims into a provisional application; 2) prepare new, post-Festo claims; and 3) convert the thus-created provisional application into a nonprovisional application with the new, post-Festo claims. (A word of caution: at this point in time, it is unclear whether the Federal Circuit will allow the Festo decision to be "circumvented" in this manner).
To avoid the bar to the doctrine of equivalents for amended claim limitations imposed by the Festo decision, patent applicants must now prepare and prosecute patent applications with a view to gaining allowance without amending the claims. Some suggestions for the preparation and prosecution of applications in the post-Festo era are set forth below:
1. Include a series of independent claims of varying scope for each category of invention being claimed. To avoid the need to make narrowing amendments to obtain allowance, each application should include a series of independent claims of varying scope for each category of invention (i.e., apparatus, method, system, data structure, computer readable media, etc.) being claimed. By way of example, for an application including system, method, and computer readable media claims, i.e., three categories of invention, it is recommended that at least nine (9) to twelve (12) independent claims be included, instead of just the three (3) independent claims included in the basic PTO filing fee. Depending on the nature of the invention, the scope of the claims in each series may be varied by adding features, e.g., A + B, A + B +C, A + B + C + D, etc., by varying the limitations used to define each feature, e.g., A + B, A' + B, A'' + B, etc., or by using another creative technique that more appropriately suits the particular situation.
For crucial inventions, patent applicants may want to consider including two or more series of independent claims for each category of invention. To ensure that truly different claim drafting approaches are used in this situation, patent applicants may want to go so far as to have a second attorney prepare one of the series of independent claims for each category of invention. The use of different claim drafting approaches within each category of invention should significantly reduce the risk of having to amend all of the as-filed independent claims in a particular category thus invoking the bar to infringement by equivalents imposed by the Festo decision.
2. If appropriate, include one or more properly supported "means-plus-function" claims. Pursuant to 35 U.S.C. § 112, sixth paragraph, a claim feature recited in means-plus-function language literally encompasses the corresponding structure disclosed in the specification and its equivalents. Thus, even if amended during prosecution, the literal scope of a means-plus-function feature will always include the 112(6) equivalents of the corresponding structure. Under Federal Circuit law, however, the scope of protection afforded by means-plus-function claims strongly depends on the quality of the supporting specification. Accordingly, when means-plus-function claim language is used, care should be taken to ensure that the specification explicitly defines each "means" and includes an illustrative list of alternative structures (or procedures) that may be used to perform the recited function.
3. Have claims allowed in the first Office Action issued immediately, and challenge any rejected claims in a continuation application. Although it is arguable whether claims allowed without amendment do indeed provide the public with better notice of the claimed subject matter than claims that are amended during prosecution, the Festo decision permits access to the doctrine of equivalents only for claim limitations allowed without amendment. Up until the Festo decision, patent practitioners were not always pleased to have claims allowed in the first Office Action for fear that the claims were not as broad as possible in view of the prior art. In stark contrast, claims allowed in the first Office Action are highly desirable in the post-Festo era because they are entitled to a range of equivalents. Accordingly, to preserve unfettered access to the doctrine of equivalents, patent applicants may want claims allowed in the first Office Action to be issued immediately. Thereafter, any claims rejected in the first Office Action can be pursued in a timely filed continuation application. When rejected claims are canceled to place the application in condition for allowance, the accompanying remarks should make clear that the patent applicant intends to pursue the canceled claims in a continuation application to avoid creating an estoppel situation. Of course, if a continuation application is not filed or the canceled claims are ultimately found to be unpatentable, then an estoppel may be created that prevents the right to exclude from being expanded to recapture subject matter corresponding to that defined in the canceled claims.
4. Include Patent Cooperation Treaty (PCT) applications in your filing strategy. For some patent applicants, strategic use of PCT applications may be an effective way to counteract the Festo decision. For example, a concurrently filed PCT application including relatively narrow claims can be used as a "backup plan" for a U.S. patent application filed with relatively broad claims. In the event the relatively broad claims must be narrowed to obtain allowance, the patent applicant has the option of abandoning the U.S. application and then pursuing the narrower claims when the PCT application enters the U.S. national phase. Although execution of this strategy may create an estoppel situation (due to the abandonment of the relatively broad claims), this result is less severe than the inflexible bar to the doctrine of equivalents mandated by the Festo decision. Moreover, the narrower claims should enjoy the newly created provisional right to compensation by virtue of being published with the international application.
Alternatively, a patent applicant can use a PCT application as the sole vehicle for obtaining patent protection in the U.S. One benefit of this strategy is that the patent applicant has the opportunity to review the international search report before entering the U.S. national phase. If the international search report discovers pertinent prior art or claim "defects" are discovered after filing, then substitute claims can be presented pursuant to Article 19. One can argue that claim revisions made pursuant to Article 19 do not raise the public notice concerns addressed by the Festo decision-such revisions occur before any substantive examination of the claims and before the international application is published at eighteen months-and, therefore, should not trigger the bar to the doctrine of equivalents. (Another word of caution: at this point in time, it is unclear whether the Federal Circuit will allow the Festo decision to be "circumvented" in this manner). Another benefit of PCT applications is that they may shorten the time required to obtain a U.S. patent for computer-related inventions. In particular, by filing a request for expedited processing, a PCT applicant can typically obtain a first Office Action within about 19-22 months. In contrast, the average time to obtain a first Office Action for non-PCT applicants with computer-related inventions currently exceeds 24 months.
5. Devote more resources to the preparation and prosecution of patent applications. The claim drafting and filing strategies suggested above will significantly increase the legal fees and PTO filing fees associated with the preparation and filing of patent applications. In addition, the legal fees associated with patent prosecution will increase significantly because the inability to amend claims freely leaves patent applicants with no alternative but to challenge vigorously the impropriety of claim rejections all the way through appeal when necessary. Accordingly, patent applicants who desire meaningful patent protection must increase their budget for the preparation and prosecution of each application. Moreover, given the certain loss of claim scope associated with narrowing claim amendments, patent counsel would be wise to require written authorization from patent applicants for any such claim amendments. Thus, to make informed decisions regarding prosecution strategy, patent applicants must increase the extent to which they substantively participate in the prosecution of their applications. In the case of corporate patent personnel, who may be supervising the prosecution of hundreds of applications, the workload may increase to the point that additional patent staff is required.
CONCLUSION
The Festo decision significantly increases the cost and complexity of patent preparation and prosecution. In response to the Festo decision, patent applicants must implement new strategies formulated to obtain allowance of claims that have not been narrowed during prosecution. Otherwise, the patent protection obtained may not be meaningful because it is limited to the literal scope of any amended claim limitations.
© 2000 Peter B. Martine and Albert S. Penilla. The suggestions set forth in this executive summary are offered for the purpose of stimulating discussion regarding the Festo decision. Readers adopting any of these suggestions do so at their own risk.
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