Don`t Delay Patent Applications

If you want to hold onto your inventions, it`s a good idea to get your patent validated quickly. The ``laches defense`` — a mechanism that can weaken a patent — just got its second wind.

A federal appeals court ruled that companies can challenge “submarine patents” — patent applications filed decades before the patent was issued.

The case, Symbol Technologies Inc. v. Lemelson Medical, Education & Research Foundation, involves bar code and scanning technology invented by Jerome Lemelson.

During his career as a prolific inventor, Lemelson kept many of his patents secret for decades as pending applications. After he died, his estate sued hundreds of companies in the semiconductor, software, computer, and retail industries for infringement. The estate collected an estimated $1.5 billion in the process.

In the recent case, Symbol maintained that by unreasonably delaying the bar code and scanning patent applications, Lemelson should be barred from enforcing its patent rights.

Symbol`s lawyers argued that the ``doctrine of laches`` prevented the Lemelson Foundation from enforcing patents because the applications remained hidden during the 36 years it took for the technology to mature and develop into an industry. The court agreed, ruling that the laches doctrine was a valid defense against infringement charges.

What this means: An undue delay in processing a patent may unfairly hinder a defendant’s ability to mount a defense and thus invalidate the patent.

The fundamental issue is whether, as a matter of law, the equitable doctrine of laches may be applied to bar enforcement of patent claims after an unreasonable and unexplained delay in prosecution — even though the applicant otherwise complied with pertinent statutes and rules.

The court cited two U.S. Supreme Court cases that applied the defense of prosecution laches in patent disputes. The court also noted that the Supreme Court subsequently ratified prosecution laches as a defense to an infringement action involving new claims issuing from divisional and continuing applications. This is significant because it suggests that laches can arise in as brief a time as two years.

While the ruling may be a victory for the hundreds of companies facing infringement suits by the Lemelson Foundation, two recent changes in the law limit its long-term application

First, the patent term has been changed to twenty years from first filing, eliminating a major flaw in the system that allowed so-called ``submarine patents`` to remain pending for an unlimited amount of time. Under the new law, the patents in the Lemelson case would have expired before they were issued.

Second, all patent applications now are published within 18 months of the application, eliminating the second laches risk — secrecy.

Submarine patentsIn the past, patent law allowed patent applications to be kept secret until an actual patent was issued. So an inventor could amend the claim, introduce new aspects and improve it, maintaining the validity without a patent actually having been issued. Meantime, other inventors could independently come up with the same product or technology and put it on the market — not knowing there was a patent pending. The hidden patent would then emerge from the depths of the Patent Office like a submarine when the original inventor filed an infringement suit.

A Creative LifeWith more that 560 patents in his name, Jerome Lemelson ranks second only to Thomas Edison in patents held by an American inventor. Lemelson averaged one patent a month for more than 40 years, claiming the creation of technology behind the Sony Walkman, VCRs, bar-code scanners, fax machines, camcorders, robots, ATMs and even crying baby dolls.

TIP

If you`re interested in applying for a patent, contact your attorney to act promptly. You need to secure your rights and file continuation and divisional applications. Otherwise, you run the risk a court ruling involving the laches doctrine when you try to enforce the validity of the patent.