Prosecution history estoppel
Encyclopedia
Prosecution history estoppel, also known as file-wrapper estoppel
, is a term used in United States patent law
to indicate that a person who has filed a patent application
, and then makes narrowing amendments to the application to accommodate the patent law, may be precluded from invoking the doctrine of equivalents
to broaden the scope of their claims to cover subject matter ceded by the amendments.
Although primarily a U.S. term, questions of whether, or the extent to which the prosecution history should be relevant for determining the extent of protection of a patent also arise outside the U.S.
.
for certain elements of his claim in instances where, during his patent prosecution he files:
, 535 U. S. 722 (2002), citing the instruction in Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co.
, found that "courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community," overturned the complete bar issued by the Federal Circuit. It also acknowledged that while any narrowing amendment made for a reason related to patentability could give rise to prosecution history estoppel, inventors who amended their claims under the previous case law had no reason to believe that they were conceding all equivalents of amended elements when responding to a rejection. Had they known, the Court stated, they might have appealed the rejection.
With this policy in mind, the Court stated that it preferred a presumptive bar approach to the doctrine of equivalents. This presumptive bar approach holds that where claims are amended, "the inventor is deemed to concede that the patent does not extend as far as the original claim" and the patentee has the burden of showing that the amendment does not surrender the particular equivalent. To succeed, then, the patentee must establish that:
Estoppel
Estoppel in its broadest sense is a legal term referring to a series of legal and equitable doctrines that preclude "a person from denying or asserting anything to the contrary of that which has, in contemplation of law, been established as the truth, either by the acts of judicial or legislative...
, is a term used in United States patent law
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
to indicate that a person who has filed a patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
, and then makes narrowing amendments to the application to accommodate the patent law, may be precluded from invoking the doctrine of equivalents
Doctrine of equivalents
The doctrine of equivalents is a legal rule in most of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed...
to broaden the scope of their claims to cover subject matter ceded by the amendments.
Although primarily a U.S. term, questions of whether, or the extent to which the prosecution history should be relevant for determining the extent of protection of a patent also arise outside the U.S.
United States
The defining case on prosecution estoppel in the United states is Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 , was a United States Supreme Court decision in the area of patent law that examined the relationship between the doctrine of equivalents Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), was a United States...
.
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
Court of Appeals for the Federal Circuit Holding
In November 2000, the Court of Appeals for the Federal Circuit set a complete bar rule. This complete bar rule completely prohibited a patent owner from asserting the doctrine of equivalentsDoctrine of equivalents
The doctrine of equivalents is a legal rule in most of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed...
for certain elements of his claim in instances where, during his patent prosecution he files:
- an amendment that narrows the scope of a claim for any reason related to the statutory requirements for a patent will give rise to a complete bar with respect to the amended claim element;
- a "voluntary" claim amendment that narrows the scope of the claim for a reason related to the statutory requirements for a patent will give rise to prosecution history estoppel as to the amended claim element; and
- an amendment and fails to explain the reasons for the amendment during prosecution of his patent.
Supreme Court reversal
The United States Supreme Court in their opinion Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 , was a United States Supreme Court decision in the area of patent law that examined the relationship between the doctrine of equivalents Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), was a United States...
, 535 U. S. 722 (2002), citing the instruction in Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co.
Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co.
Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 , was a United States Supreme Court decision in the area of patent law, affirming the continued vitality of the doctrine of equivalents while making some important refinements to the doctrine.-Facts:The plaintiff Hilton Davis...
, found that "courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community," overturned the complete bar issued by the Federal Circuit. It also acknowledged that while any narrowing amendment made for a reason related to patentability could give rise to prosecution history estoppel, inventors who amended their claims under the previous case law had no reason to believe that they were conceding all equivalents of amended elements when responding to a rejection. Had they known, the Court stated, they might have appealed the rejection.
With this policy in mind, the Court stated that it preferred a presumptive bar approach to the doctrine of equivalents. This presumptive bar approach holds that where claims are amended, "the inventor is deemed to concede that the patent does not extend as far as the original claim" and the patentee has the burden of showing that the amendment does not surrender the particular equivalent. To succeed, then, the patentee must establish that:
- the equivalent was unforeseeable at the time the claim was drafted;
- the amendment did not surrender the particular equivalent in question; or
- there was some reason why the patentee could not have recited the equivalent in the claim.