As a result of considerable concern internationally in the patent community and in multiple industries, Group 6 was asked to participate in the preparation of an appeal petition and brief to the Supreme Court of the United States regarding the U.S. Federal Circuit decision in the above Festo case which severely restricted the doctrine of equivalents in patent matters. In short form the Festo court concluded that any change in the claim language due to patentability issues (35 U.S.C. §§ 101, 102, 103 and 112) would create a complete bar to the application of the doctrine of equivalents to that claim. This would be true with respect to voluntary amendments as well as required amendments responding to office actions. The previous law has been known as the "flexible bar" approach evaluating all circumstances surrounding the claim change. The Federal Circuit in Festo claimed that since the "notice function" was considerably important and required lending certainty to claim protection it was no longer possible to allow a flexible approach.

FICPI as well as 20 other organizations filed amicus briefs supporting reversal of the Federal Circuit decision. Only one brief by IBM/Kodak with the support of Proctor & Gamble (and, in spirit, apparently Honeywell) was furnished. FICPI has worked very closely with counsel for Festo, the patent owner, to inform its positions on appeal. We have presented the only true international brief explaining the complete international impact of Festo and would expect it had some notice by the U.S. Supreme Court. Certiorari was granted quickly after the amicus briefs were filed. The briefing period ended on August 31, 2001 after a month extension requested by Festo, and it was expected the case would not be argued until the Fall term. A decision would be expected after December of this year and possibly as late as June of next year. As attachments to our brief, we have been able to provide not only the draft PLT positions on substance but the laws of many foreign countries including France and the opinion of a German federal judge with the assistance of Dieter Behrens' firm to support our position.

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See also paper EXCO/GB01/CET/1604 in connection with this subject.