Prolific patenter denied post-partumSeptember 14, 2005

Fourteen patents held unenforceableIn a decision released Friday, September 9, the Federal Circuit upheld the district court’s finding that 14 patents issued to the now deceased Jerome Lemelson are unenforceable under the doctrine of prosecution laches.Prosecution laches can arise when there is an unreasonable and unexplained delay in the process of obtaining a patent, generally with the intent of extending the patent’s term. Patents filed prior to June 8, 1995 are valid for 17 years after they issue. This tempts some inventors who had filed before that date to intentionally delay the procedures at the Patent and Trademark Office in order to allow industry to develop without knowledge of the inventor’s patent, potentially resulting in many companies infringing the patent once it finally issues. Patents that issue using this strategy are called ‘submarine’ patents, because they are not available to the public until they ‘surface,’ or issue as a patent. Lemelson is well-known for this strategy, and his foundation (who now owns his patents) has received over $1.5 billion in license fees over the years based on patents covering such things as VCRs, camcorders, cordless phones, fax machines, bar code scanners, and automated warehouses.The patents involved in the case issued between July 6, 1982 and September 27, 1994, but all claimed the benefit of applications filed in 1954 or 1956. The Federal Circuit held that while prosecution laches should be used ‘only in egregious cases of misuse of the statutory patent system,’ this was one of those cases. The patent laws provide a statutory mechanism to continue prosecution of an application, and ordinarily when those procedures are followed, prosecution laches will not arise. However, ‘refiling an application solely containing previously-allowed claims for the business purpose of delaying their issuance can be considered an abuse of the patent system.’ Based on this, the 14 patents involved in the suit (relating to machine vision and bar code technology) were held to be unenforceable. While this ruling does not affect Lemelson’s other patents, a similar result would be likely should other patents related to the 1954 or 1956 applications be litigated in the future, and serves as a cautionary tale to others who attempt to obtain or enforce ‘submarine’ patents.