The Aftermath of \u3cem\u3eFesto v. SMC\u3c/em\u3e: Is There Some Other Reason for Justifying the Third \u3cem\u3eFesto\u3c/em\u3e Rebuttal Criterion?

Encouraging technological innovation and improvement lies at the heart of the U.S. patent system. To achieve this goal, the patent system must provide robust protection to patentees while assuring that would-be inventors know exactly where protected inventions end and areas open to development begin. In recognizing the importance of these two functions of the patent laws, the Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. ( Festo VIII ) set out to clarify the relationship between two important, yet troublesome, patent law doctrines-the doctrine of equivalents and prosecution history estoppel. However, in its attempt to restore balance between the protective and notice functions, the Court may have merely exacerbated the problem between these doctrines by elevating the protective function of patents over providing notice to the public. This Note will focus on the Court\u27s new presumption for determining when the doctrine of equivalents applies and when prosecution history estoppel bars its use. Specifically, this Note will argue that the third method defined by the Court for a patentee to rebut its new presumption sacrifices the notice function by making it virtually impossible for a would-be inventor, attempting to design around a patented invention, to determine the scope of equivalents ex ante. The policies underlying the patent laws direct that innovation will suffer greatly if the interests of the patentee and the public are not brought back into balance