Saturday, November 27, 2004

The scope of surrender in Festo

In the November 2004 issue of Intellectual Property Today, Grant Langton et al. of Jeffer Mangels suggest that "a claim that is cleanly allowed without being amended may ultimately capture a greater lanscape of products (through its scope of equivalents)..."

The Langton article did not cite to the Hamilton Sunstrand case, wherein a cleanly allowed dependent claim was infected by surrender in the independent claim. It may be that the "clean allowance" of a claim is not the principal issue. Rather, if there is any claim with broader scope as to a claim element which is narrowed through amendment or abandoned, that action of surrender can infect other claims reciting that element and affect the equivalents for that element.

Whether the use of many independent claims solves the Festo problem remains to be seen.

Separately, from a board:

-->As for Festo, abandoning an application with broad claims to file a second application with the same specification and narrower claims has the same effect as cancelling broad claims and entering narrower claims without comment through a preliminary amendment. <--

The "without comment" merits discussion. In the past, the mantra has been --the less said, the better.-- Now, with a presumption of surrender, there is some merit in explaining why one narrows a claim. In the Festo case itself, Festo might have been able to make a "tangential" argument if the reason for the change had been more clear. On the facts as they were, Festo had no opportunity for the tangential argument, which ultimately may become the best way to rebut the presumption of surrender (note Insituform, Cordis, and see my article in the December 2004 issue of Intellectual Property Today.)

Of foreseeability, the patentee has to walk a tightrope in showing no foreseeable interchangeability at the time of amendment, but interchangeability at the time of infringement.


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