Accurate Downloadable Version of Footnote 2

Due to the JPTOS' policy of not forwarding galley proofs to authors, several errors generated by software conversion appeared in the publication of my manuscript "An Open Letter to the Supreme Court Concerning Patent Law" (83 JPTSO 438, June 2001). The Editor kindly printed an Errata in the October issue, 83 JPTOS 683-684. As he noted, I am posting a version of footnote 2 that is easy to download. I have removed all the formatting commands and replaced them with ascii characters:

• CAPITAL LETTERS are used for the words that were italicized in the original.
• /_ before-and-after-slashes-and-underscores _\ replace the start and end of underlining.
• indentations are shown by insertion of yhe words INDENT and DOUBLE INDENT in {CURLY BRACKETS}

Footnote 2 concerned a passage from /_ Warner-Jenkinson Co. v. Hilton Davis Chem. Co. _\, 520 U.S. 17, 33, 137 L. Ed. 2d 146, 117 S. Ct. 1040 (1997). The passage, with two kinds of emphasis added, was supposed to read as follows:

{INDENT} "It is telling that in each case this Court probed the reasoning behind the Patent Office's /_ insistence upon a change _\ in the claims. In each instance, a change was /_ demanded _\ because the claim as otherwise written was viewed as not describing a patentable invention at all -- typically because what it described was encompassed within the prior art. But, as the United States informs us, there are a variety of other reasons why the PTO may /_ request _\ a change in claim language. Brief for United States as Amicus Curiae 22-23 (counsel for the PTO also appearing on the brief). And if the PTO has been /_ requesting _\ changes in claim language without the INTENT to limit equivalents or, indeed, with the EXPECTATION that language it required would in many cases allow for a range of equivalents, we should be extremely reluctant to UPSET THE BASIC ASSUMPTIONS of the PTO without substantial reason for doing so. ... [note 6] {END INDENT}
{DOUBLE INDENT} "6. ... This is especially true where, as here, the PTO may have RELIED UPON A FLEXIBLE RULE OF ESTOPPEL when deciding whether to /_ ask for _\ a change in the first place. To change so substantially the rules of the game now could very well subvert the various BALANCES THE PTO SOUGHT TO STRIKE when issuing the numerous patents which have not yet expired and which would be affected by our decision." {END DOUBLE INDENT}

The underlined words (here, /_surrounded_\) are discussed in Part I of the article (pages 438-441) and the italicized (here, CAPITALIZED) words are discussed in Part II (pages 441-443).