Patent Enforcement Delay Now May Be Fatal Error

The Lemelson patent era may finally be over. In a decision issued on Jan. 23, a Nevada federal court ruled that a number of patents invented by Jerome H. Lemelson were invalid and unenforceable.

Jerome Lemelson, who died in 1997, was a prolific inventor, second only to Thomas Edison (and Lemelson still has patents pending at the Patent Office). A number of the Lemelson patents, though, are what are called “submarine” patents, patents that a patentee keeps in the application phase for years by filing continuation applications, amending claims over time to more closely describe evolving technology, and allowing the patent to finally issue after the technology has matured and the patent rights will be more lucrative. Since patent applications used to be kept secret indefinitely, there was also no way of knowing whether a patent application had been filed until the patent was actually issued, so there was also no way to avoid infringement.

Lemelson's particular field was bar codes and machine vision. In the case of the Nevada suit, the patents issued between 18 and 39 years after the filing of the original application. Over the years, the Lemelson Foundation has collected $1.5 billion in licensing fees from almost a thousand licensees, who found it less expensive to pay a fee than engage in expensive litigation to challenge the validity of the patents.

In more recent years, the Patent Act itself has been changed in ways that reduce the likelihood of submarine patents. Effective in 1995, the term of a patent was changed to count from the date the application was filed, not the date that it eventually issued. Also, patent applications are now published 18 months after filing, so that it is not as easy to hide a pending patent. These changes, however, although helping to prevent future “submarine” patents, did not stop the enforcement of existing submarine patents.

So another tactic was needed to end the Lemelson patent dynasty, which took the form of a defense known as “prosecution laches.” “Laches” is a general legal doctrine that prevents the enforcement of a claim where there has been a delay in filing the claim and the defendant is prejudiced by the delay ' it is similar to a statute of limitations.

“Prosecution laches” is a subset where there has been a delay in the patent prosecution process, so that there is an unreasonable period of time between when the application was filed and when the patent eventually issues.

The prosecution laches doctrine was thought to be defunct after the Patent Act was rewritten in 1952. Perhaps because it was faced with an egregious case, though, the U.S. Court of Appeals for the Federal Circuit held in January 2002, that there was still such a thing as prosecution laches, opening the way for the trial court to decide last month that, indeed, prosecution laches existed in this case. The Nevada court said about the Lemelson patents: “The evidence adduced at trial is abundant that during that period, machine vision and bar code technology was developed by many who had never heard of the Lemelson patents. If the defense of prosecution laches does not apply under the totality of circumstances presented here, the court can envision very few circumstances under which it would.”

The surprising part of the appeals court decision was that Lemelson had followed all the rules and only taken advantage of intended flexibility in the patenting process, now creating uncertainty about when delay is too much. As a result of this case, litigators obligated to vigorously represent their clients will be sure to raise a defense of prosecution laches if the time between application and issuance is out of the ordinary. This will increase the cost of patent litigation and the burden on the court by raising these fact-intensive claims that require examination of every step in the patenting process for signs of tactical delay.

There is no bright line for when a long time has been too long, and there have already been cases where the defense was raised, unsuccessfully, for a patent pendency of 7 years. The courts have also rebuffed arguments that prosecution laches claims could not exist under the new 1995 change to the length of the patent term. Prosecution laches is a defense that is here to stay and that you will have to defend against.

This article originally appeared in The Connecticut Tech Tribune, an American Lawyer Media publication.

The Lemelson patent era may finally be over. In a decision issued on Jan. 23, a Nevada federal court ruled that a number of patents invented by Jerome H. Lemelson were invalid and unenforceable.

Jerome Lemelson, who died in 1997, was a prolific inventor, second only to Thomas Edison (and Lemelson still has patents pending at the Patent Office). A number of the Lemelson patents, though, are what are called “submarine” patents, patents that a patentee keeps in the application phase for years by filing continuation applications, amending claims over time to more closely describe evolving technology, and allowing the patent to finally issue after the technology has matured and the patent rights will be more lucrative. Since patent applications used to be kept secret indefinitely, there was also no way of knowing whether a patent application had been filed until the patent was actually issued, so there was also no way to avoid infringement.

Lemelson's particular field was bar codes and machine vision. In the case of the Nevada suit, the patents issued between 18 and 39 years after the filing of the original application. Over the years, the Lemelson Foundation has collected $1.5 billion in licensing fees from almost a thousand licensees, who found it less expensive to pay a fee than engage in expensive litigation to challenge the validity of the patents.

In more recent years, the Patent Act itself has been changed in ways that reduce the likelihood of submarine patents. Effective in 1995, the term of a patent was changed to count from the date the application was filed, not the date that it eventually issued. Also, patent applications are now published 18 months after filing, so that it is not as easy to hide a pending patent. These changes, however, although helping to prevent future “submarine” patents, did not stop the enforcement of existing submarine patents.

So another tactic was needed to end the Lemelson patent dynasty, which took the form of a defense known as “prosecution laches.” “Laches” is a general legal doctrine that prevents the enforcement of a claim where there has been a delay in filing the claim and the defendant is prejudiced by the delay ' it is similar to a statute of limitations.

“Prosecution laches” is a subset where there has been a delay in the patent prosecution process, so that there is an unreasonable period of time between when the application was filed and when the patent eventually issues.

The prosecution laches doctrine was thought to be defunct after the Patent Act was rewritten in 1952. Perhaps because it was faced with an egregious case, though, the U.S. Court of Appeals for the Federal Circuit held in January 2002, that there was still such a thing as prosecution laches, opening the way for the trial court to decide last month that, indeed, prosecution laches existed in this case. The Nevada court said about the Lemelson patents: “The evidence adduced at trial is abundant that during that period, machine vision and bar code technology was developed by many who had never heard of the Lemelson patents. If the defense of prosecution laches does not apply under the totality of circumstances presented here, the court can envision very few circumstances under which it would.”

The surprising part of the appeals court decision was that Lemelson had followed all the rules and only taken advantage of intended flexibility in the patenting process, now creating uncertainty about when delay is too much. As a result of this case, litigators obligated to vigorously represent their clients will be sure to raise a defense of prosecution laches if the time between application and issuance is out of the ordinary. This will increase the cost of patent litigation and the burden on the court by raising these fact-intensive claims that require examination of every step in the patenting process for signs of tactical delay.

There is no bright line for when a long time has been too long, and there have already been cases where the defense was raised, unsuccessfully, for a patent pendency of 7 years. The courts have also rebuffed arguments that prosecution laches claims could not exist under the new 1995 change to the length of the patent term. Prosecution laches is a defense that is here to stay and that you will have to defend against.

This article originally appeared in The Connecticut Tech Tribune, an American Lawyer Media publication.