Skip to main content
Premium Trial:

Request an Annual Quote

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.

The Scan

US Booster Eligibility Decision

The US CDC director recommends that people at high risk of developing COVID-19 due to their jobs also be eligible for COVID-19 boosters, in addition to those 65 years old and older or with underlying medical conditions.

Arizona Bill Before Judge

The Arizona Daily Star reports that a judge weighing whether a new Arizona law restricting abortion due to genetic conditions is a ban or a restriction.

Additional Genes

Wales is rolling out new genetic testing service for cancer patients, according to BBC News.

Science Papers Examine State of Human Genomic Research, Single-Cell Protein Quantification

In Science this week: a number of editorials and policy reports discuss advances in human genomic research, and more.