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On May 28, 2002, the United States Supreme Court vacated the Federal Circuit Court of Appeals decision in the case of Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd. and has reinstated the flexible bar approach for considering prosecution history estoppel. Under the Federal Circuit's Festo decision, no equivalents whatsoever would have been available if a claim element was narrowed for any reason during patent prosecution. However, in vacating and remanding the decision of the Federal Circuit, the Supreme Court held that while prosecution history estoppel may arise for amendments made for purposes other than for avoiding prior art, it does not bar the inventor from asserting infringement under the doctrine of equivalents against every equivalent to the narrowed element, particularly in those cases wherein the accused equivalents were "unforeseeable at the time of the application" or where "the rationale underlying the amendment bears but a tangential relation to the equivalent." To see a copy of the Supreme Court's decision, click here.

To see copies of the briefs of the parties and amici for this case (Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., et al., No. 00-1543), click here. To see a copy of the Federal Circuit's decision in Festo, click here.

 The American Inventors Protection Act (P.L. 106-113) signed into law on November 29, 1999 has now been implemented by the U.S. Patent and Trademark Office. The highlights of the legislation are (1) protection against practices of certain invention promotion companies; (2) a reduction in certain patent fees; (3) the provision of a defense against infringement of "doing or conducting business" claims for parties who can show they were practicing the claimed invention more than one year before the filing date of the patent; (4) the provision of possible patent term extensions for certain applications which encounter PTO processing delays; (5) publication of pending U.S. patent applications 18 months after the filing date (unless the applicant certifies that the invention has not and will not be the subject of an application filed in a foreign country); and (6) new procedures which will allow increased participation of third-party requesters in the patent reexamination process. To see our client advisory letter regarding the highlights of the new changes, click here.

 The Member States of the European Community have recently developed a directive, which will govern the legal protection of biotechnological inventions. To see a copy of the European Community's directive, click here.