US Court of Appeals Sinks "Submarine Patents"

In Symbol Technologies Inc et al v Lemelson Medical Educational & Research Foundation, 04-1451, the US Court of Appeals for the Federal Circuit upheld a decision that prevents patent holders from exercising their rights if they have taken an excessively long time to complete the filing process. The patents at issue concerned "machine vision and automatic identification technology". The Court held that although it was understandable that the prosecution process can be subject to legitimate and extensive delays, where the applicant re-files an application solely containing previously-allowed claims for the business purpose of delaying their issuance, the court may consider it an abuse of the patent system. On the facts of this case, there were multiple procedural steps that delayed issuance "” an 18- to 39-year time period had elapsed between the filing and issuance of the patents. The Court resorted to the doctrine of laches to prevent the patent holder from exercising its rights, on the basis that a court of equity will not assist those who slumber on their rights. Since late 1989, the Canadian patent term has been 20 years from the application date, instead of 17 years from grant, and Canadian patent applications have been available to the public six to 18 months after filing. Thus, submarine patent applications, which continue unseen for years only to surface long after the technology has been commercialized, are now very rare in Canada. Similar reforms have been in place in the US for ten years. For the full text of the decision, see: http://makeashorterlink.com/?M26741FDB Summary by: James Kosa