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Issue 30 | September 27, 2002
11 strikes and you're out?
Prosecution Laches at the PTO
 The Federal Circuit has recently issued a new decision that may affect patent prosecution strategy. In IN RE STEPHEN B. BOGESE II, Slip Op. No. 01-1354 (Sept. 13, 2002), the panel held that the the PTO had the right to reject claims during prosecution for laches, particularly in cases involving repeated filing of continuations with substantially the same claims. In this case, the applicant had filed eleven file wrapper continuation applications over an eight-year period.

The Court recognized that, under Ex parte Hull, 191 USPQ 157 [USPTO Bd. of Apps.] 1975, a specific warning is necessary before forfeiture can be invoked. The examiner here, however, had specifically required the applicant to make a "substantive amendment to advance prosecution" or risk losing his right to a patent.

Moreover, contributing delay by the PTO was found not to be an excuse.

The Court also recognized the tension between its holding and State Industries:
[A]ppellant cites State Industries, Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1235-36, 224 USPQ 418, 423-24 (Fed. Cir. 1985), for the proposition that it is permissible to "maintain[] pendency of an application . . . while competitors' products appear on the market in an effort to later draft and obtain the allowance of claims that read on the competitors' products." Appellant's Reply Br. at 21. An applicant's attempt to obtain new claims directed to inventions that he or she believes are fully disclosed and supported in an earlier application, however, is easily distinguishable from appellant's failure to further the prosecution of his application toward the issuance of any claims.
Finally, it also sounds as if not all the Federal Circuit is in agreement with the decision in Symbol Techs. holding:
Whatever the views of the individual panel members concerning the correctness of our decision in Symbol Technologies, we are nonetheless bound by it, and we see no basis for denying the power to the PTO itself that we have recognized exists in the district courts in infringement actions. It necessarily follows that the PTO has the authority to reject patent applications for patents that would be unenforceable under our holding in Symbol Technologies.
Grantland Drutchas is one of the founding partners of McDonnell Boehnen Hulbert & Berghoff. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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