The Submarine Defense System Misfires: Patent Prosecution Laches After Symbol Technologies

Christopher C. Smith, The Submarine Defense System Misfires: Patent Prosecution Laches After Symbol Technologies, 40 Gonz. L. Rev. 235 (2005).

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Throughout history the law has emphatically protected the property rights of one person from the interference of another. The Framers integrated such protection into the Constitution for intellectual property rights when they authorized Congress “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” In exercising this power, Congress balanced the need to provide an incentive for people to invent with the desirability of retaining the long term benefits of these inventions for society. Section 154 of the Patent Act further accomplishes this goal by limiting a patentee’s exclusive rights to a fixed term.

However, some patentees have delayed the issuance of their patents until the patent has greater commercial appeal. Experts refer to these patents as “submarine”  patents.  This practice can result in great inequities to third parties who continue to invent while another application covering the same subject matter of their inventions remains concealed at the Patent & Trademark Office (PTO). In response, the courts developed the equitable defense of prosecution laches that gives the accused infringer recourse when a patentee has unreasonably prolonged the issuance of his patent.  Prosecution laches bars relief for infringement when the patentee has unreasonably delayed asserting his patent rights and this unreasonable delay has prejudiced the accused infringer.

For many years, prosecution laches was an option for accused infringers. Recently, however, it had become unclear whether the courts still accept this defense. As a result, the Federal Circuit revisited the question of whether laches still provides a viable defense for patent infringement cases in Symbol Technologies, Inc. v. Lemelson Medical, Education & Research Foundation.  In Symbol Technologies, the Federal Circuit held that the defense of prosecution laches was still a viable defense for those accused of patent infringement. Unfortunately, the court failed to give any other guidance as to how the defense of laches is to be applied, thus leaving the district courts to develop their own application of the doctrine.  The district courts split in their interpretation of the doctrine, thus exposing Symbol Technologies’ failure to develop a uniform standard for laches….Read More

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