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The Lemelson patent era may finally be over. In a decision issued onJan. 23, a Nevada federal court ruled that a number of patentsinvented by Jerome H. Lemelson were invalid and unenforceable. Jerome Lemelson, who died in 1997, was a prolific inventor, second onlyto Thomas Edison (and Lemelson still has patents pending at thePatent Office). A number of the Lemelson patents, through, are what arecalled “submarine” patents, patents that a patentee keeps in theapplication 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 hasmatured and the patent rights will be more lucrative. Since patentapplications used to be kept secret indefinitely, there was also no wayof knowing whether a patent application had been filed until the patentwas actually issued, so there was also no way to avoid infringement. Lemelson’s particular field was bar codes and machine vision. In thecase of the Nevada suit, the patents issued between 18 and 39 yearsafter the filing of the original application. Over the years theLemelson Foundation has collected $1.5 billion in licensing fees fromalmost a thousand licensees, who found it less expensive to pay a feethan engage in expensive litigation to challenge the validity of thepatents. In more recent years, the Patent Act itself has been changed in waysthat reduce the likelihood of submarine patents. Effective in 1995, theterm of a patent was changed to count from the date the application wasfiled, not the date that it eventually issued. Also, patent applicationsare now published 18 months after filing, so that it is not as easy tohide a pending patent. These changes, however, although helping toprevent future “submarine” patents, did not stop the enforcement ofexisting submarine patents. So another tactic was needed to end the Lemelson patent dynasty, whichtook the form of a defense known as “prosecution laches.” “Laches” is ageneral legal doctrine that prevents the enforcement of a claim wherethere has been a delay in filing the claim and the defendant isprejudiced by the delay — it is similar to a statute of limitations. “Prosecution laches” is a subset where there has been a delay in thepatent prosecution process, so that there is an unreasonable period oftime between when the application was filed and when the patenteventually issues. The prosecution laches doctrine was thought to be defunct after thePatent Act was rewritten in 1952. Perhaps because it was faced with anegregious case, though, the U.S. Court of Appeals for the Federal Circuitheld in January, 2002, that there was still such a thing as prosecutionlaches, opening the way for the trial court to decide last month that,indeed, prosecution laches existed in this case. The Nevada court saidabout the Lemelson patents: “The evidence adduced at trial is abundantthat during that period, machine vision and bar code technology wasdeveloped by many who had never heard of the Lemelson patents. If thedefense of prosecution laches does not apply under the totality ofcircumstances presented here, the court can envision very fewcircumstances under which it would.” The surprising part of the appeals court decision was that Lemelson hadfollowed all the rules and only taken advantage of intended flexibilityin the patenting process, now creating uncertainty about when delay istoo much. As a result of this case, litigators obligated to vigorouslyrepresent their clients will be sure to raise a defense of prosecutionlaches if the time between application and issuance is out of theordinary. This will increase the cost of patent litigation and burden onthe court by raising these fact-intensive claims that requireexamination of every step in the patenting process for signs of tacticaldelay. There is no bright line for when a long time has been too long, andthere have already been cases where the defense was raised,unsuccessfully, for a patent pendency of seven years. The courts havealso rebuffed arguments that prosecution laches claims could not existunder the new 1995 change to the length of the patent term. Prosecutionlaches is a defense that is here to stay and that you will have todefend against. Michael Cantor and Pamela Chestek are attorneys at Cantor Colburn ( www.cantorcolburn.com ) in Bloomfield, Conn. If you are interested in submitting an article to law.com, please click here for our submission guidelines.

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