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U.S. Supreme Court Overturns Festo, Strengthens Patent Protection

NEW YORK, May 28--The U.S. Supreme Court today overturned an Appeals Court ruling that had been blasted by the biotechnology industry as a major blow to patent protection and intellectual property integrity.


Today, the highest court ruled unanimously to restore the "doctrine of equivalents" in patent law. Broadly, the decision makes it easier to protect patents and harder to challenge them.


Festo v. Shoketsu Kinzoku Kogyo Kabushiki began in 1988, when the machine part manufacturer Festo filed suit against the Japanese firm and its U.S. subsidiary, claiming that Shoketsu's subisidiary had copied its piston design.


The U.S. District Court for Massachusetts agreed, based on the principle of the  "doctrine of equivalents." That legal concept holds that a process or invention that uses slightly different technology to achieve the same results as a patented invention is in violation of that patent, as long as the technology is "equivalent."


For decades, this doctrine of equivalents strengthened patent protection by preventing potential infringers from tweaking a few technical details of an existing invention and then claiming the technology as their own.


In November 2000, however, the U.S. Court of Appeals for the Federal Circuit ruled against Festo, crippling the doctrine of equivalents as a legal tool by holding that any modifications or refinements made to a patent during the back-and-forth of the application process would be exempt from the doctrine. Since this back-and-forth process tends to be lengthy and broad, the ruling effectively gutted the doctrine.


Industries like genomics that rely on strong intellectual property protection were devastated by the 2000 ruling. A broad coalition of high-tech backers supported a Supreme Court appeal, including the Massachusetts Institute of Technology and Cold Spring Harbor Laboratory.


Today's ruling will send the case back to the lower courts.

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