Friday, August 14, 2009 11:56:00 AM
A little more on patent infringements.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.The Festo case concerns the application and interplay of two long-standing
principles of patent law: the doctrine of equivalents and prosecution history estoppel
(also known as file wrapper estoppel). The doctrine of equivalents provides that a
product or process that does not literally infringe a patent can still be found to be
infringing if the differences between the allegedly infringing product or process and
the patented invention are minimal and insubstantial, that is, if the allegedly
infringing product or process is substantially equivalent to the patented invention.
There is equivalents infringement if the elements of an infringing product or process
perform substantially the same function in substantially the same way to obtain the
same result as the elements of the patent claims. This doctrine evolved in the federal
courts around the mid-nineteenth century and is generally acknowledged to have been
first expressed and applied in a U.S. Supreme Court case in Winans v. Denmead, 15
How. 330, 14 L. Ed. 717 (1853). The doctrine seeks to balance the right of a patent
holder to a just and fair scope of protection with the right of the public and potential
competitors to know the scope of the patent protection granted to the patent holder.
Potential competitors must know with fair certainty the limits of the patent grant in
order to be able to innovate and “design around” the patent to avoid infringement; the
patent policy seeks to encourage further genuine innovation in a given industry. At
the same time, patent holders merit protection from competitors who attempt to
design around a patent with minor changes to elements of an invention covered by
a patent.
The doctrine of equivalents is limited by prosecution history estoppel.
Prosecution history estoppel provides that if a patent applicant surrenders subject
matter during prosecution to avoid rejection, i.e., amends claims to narrow them for
reasons of subject matter patentability, the patentee cannot later claim that this
surrendered subject matter is equivalent to surviving claims in the patent. For
example, an applicant applies to patent a plastic-top table with metal legs. The
examiner rejects the claim for metal legs because prior art includes a plastic-top table
with rigid metal legs. The applicant then narrows the claim to distinguish it from
prior art by amending it to cover a plastic-top table with collapsible metal legs
folding into two parts and the patent is granted. The patentee cannot now claim that
a plastic-top table with rigid metal legs is equivalent and should be found infringing,
because the patentee surrendered rigid metal legs in the narrowing amendment. The
patent applicant could surrender subject matter by amending a claim voluntarily or
at the request of the patent examiner. Additionally, the applicant could surrender
subject matter by making an argument on the record to answer the concerns of the
examiner without actually amending the claims. Before Festo, the standard for
applying both amendment-based and argument-based prosecution history estoppel
was whether a person reasonably skilled in the art would reasonably believe that the
patentee had surrendered subject matter during prosecution. This balanced the public
notice function of the prosecution history with the fair, adequate and just scope of
patent protection.
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