Will Supreme Court Holdings Be Finally Followed By The Federal Circuit On Unavailability Of Laches Defence?

Will Supreme Court Holdings Be Finally Followed By The Federal Circuit On Unavailability Of Laches Defence?

Laches “is a gap-filling doctrine, and where there is a statute [prescribing timeliness] there is no gap to fill,” as the Supreme Court explained.

The Federal Circuit has held in Symbol Techs versus Lemelson Med that the equitable doctrine of laches could be applied to bar enforcement of a patent that issued after applicant’s unreasonable and unexplained delay in prosecution. However, later Supreme Court decisions in Petrella versus Metro Goldwyn Mayer, Inc. and SCA Hygiene Prod. Aktiebolag versus First Quality Baby Prod. LLC render Symbol no longer viable. Gene Quinn reminded readers of a critical factor that limits the federal court’s ability to exercise equitable powers of laches on timelines in prosecuting patent applications at the US Patent and Trademark Office (USPTO). Laches “is a gap-filling doctrine, and where there is a statute [prescribing timeliness] there is no gap to fill,” as the Supreme Court explained. So, “applying laches… would give judges a ‘legislation-overriding’ role that is beyond the judiciary’s power” where Congress has filled the gap by specifying the timeliness and context in which rights may be exercised. This is so though “the lack of a laches defence could produce policy outcomes judges deem undesirable.” The Court thus explained that it cannot overrule Congress’s judgement based on its own policy views. The Patent Act specifies timeliness requirements where applicants must respond to USPTO actions ‘within six months’ as Gene indicated. But many more timeliness provisions are contained by the Act, clearly indicating that Congress fully entered the field to close any statutory timeliness gaps across all aspects of obtaining patents.

Applications must be filed within one year of first publication or sale of the invention, the Act prescribes. It further provides for timeliness of continuing applications, needing them to be “filed before patenting or abandonment of or termination of proceedings on” a prior application in the priority chain. Filing of the specification of the prior priority application within a set time is also required. Payment of fees at precise times is required to avoid abandonment. Applicants must pay the issue fee within a set time upon allowance. A specific patent term is set by the Act during which maintenance fees are to be paid on specific times to maintain the patent. Significantly, Congress was mindful of and particularly addressed applicant delays in meeting these statutory deadlines. It authorized the USPTO to allow deviations from these deadlines in specific circumstances, such as ‘unintentional’ or ‘unavoidable’ applicant delay. According to critics, there is a ‘gap’ in the statute in that it does not prevent what they deem ‘unreasonable delay’ in prosecution through applicants’ repeated submissions. However, no such ‘gap’ was left by the Congress as evident independently from several provisions.

Furthermore, the Congress left no timeliness gaps to protect third parties from prejudice against their intervening rights; the only reason courts have previously applied the equitable doctrine of prosecution laches. Where Congress intends equitable powers to be used in protecting intervening rights, it does so explicitly by prescribing proper mechanism, modality, degree and scope of such protections. That the Congress exhaustively addressed protection of intervening rights in the Patent Act but left a gap for such rights acquired during only some prosecution delays is an untenable proposition. Congress adequately covered by statute the manner in which the public would be protected from prejudice due to any continuing application. Where Congress intends courts to exercise their equitable powers in protecting intervening rights related to patents, it does so expressly by framing the modalities and setting the equitable factors by statute. It did not authorize courts to exercise equitable power over timeliness in prosecution. Four Federal Circuit judges reportedly expressed: “Congress having considered the doctrine of intervening rights cannot have intended that the judiciary would develop a poor man’s version of the doctrine to account for the statute’s inadequate coverage.” Judge Pauline Newman’s dissent in Symbol would ultimately be vindicated as she reportedly said then: “This judicial creation of a new ground on which to challenge patents that fully comply with the statutory requirements is in direct contravention to the rule that when statutory provisions exist, they may be relied on without equitable penalty.”