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The Dedication Rule's Effect on Business Strategy

By Daniel Basov
May 01, 2004

While the Federal Circuit's direct assault on the applicability and scope of the doctrine of equivalents may have been set back by the Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002), the so-called Dedication Rule continues to limit the scope of equivalents under some circumstances. This controversial rule deems any subject matter that is disclosed in the specification, but falls outside the literal scope of the claims, to be dedicated to the public. This judicially created doctrine effectively denies patent protection, even under the doctrine of equivalents, to the subject matter that is disclosed, but left unclaimed, in the patent. This rule has been criticized both from legal and practical perspectives, and continued adherence to this rule could significantly impact the business policies and prosecution decisions of many patentees.

History of the Dedication Rule

The rule traces its origin to a more-than-a-century-old Supreme Court decision, Miller v. Bridgeport Brass Co., 104 U.S. 350 (1881). The Miller case involved a patent for a safety lamp without chimney, with two vertically stacked domes above a perforated cap, through which the vapor and wick tubes were extended. Many years later, the patent owner filed for a reissue, claiming another embodiment of the safety lamp (which was disclosed, but not claimed in the original patent), the latter embodiment having a single dome and a chimney above it. Noting that the claim to the embodiment with a single dome and a chimney was not omitted from the original patent by mistake, the Supreme Court held that “the claim of a specific device or combination, and an omission to claim other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that which is not claimed.” Id. at 352.

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