MPEP 2190: Difference between revisions

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The Federal Circuit affirmed a rejection of claims  
Unreasonable and undue delay in prosecution will lead to rejection of claims under a theory that the applicant has forfeited his right to a patent under the doctrine of prosecution history laches. ''In re Bogese'', 303 F.3d 1362, 1369, 64 USPQ2d 1448, 1453 (Fed. Cir. 2002) (Applicant "filed twelve continuation applications over an eight-year period and did not substantively advance prosecution when required and given an opportunity to do so by the PTO.").
in a patent application on the ground that applicant  
 
had forfeited his right to a patent under the doctrine of  
While there are no firm guidelines for determining when laches is triggered, it applies only in egregious cases of unreasonable and unexplained delay in prosecution. For example, where there are "multiple examples of repetitive filings that demonstrate a pattern of unjustified delayed prosecution," laches may be triggered. ''Symbol Tech. Inc. v. Lemelson Med., Educ., & Research Found.'', 422 F.3d 1378, 1385, 76 USPQ2d 1354, 1360 (Fed. Cir. 2005).
prosecution history laches for unreasonable and undue
delay in prosecution. In re Bogese, 303 F.3d 1362,  
1369, 64 USPQ2d 1448, 1453 (Fed. Cir. 2002)  
(Applicant “filed twelve continuation applications  
over an eight-year period and did not substantively  
advance prosecution when required and given an  
opportunity to do so by the PTO.”). While there are  
no firm guidelines for determining when laches is  
triggered, it applies only in egregious cases of unreasonable  
and unexplained delay in prosecution. For  
example, where there are “multiple examples of repetitive  
filings that demonstrate a pattern of unjustified  
delayed prosecution,” laches may be triggered. Symbol  
Tech. Inc. v. Lemelson Med., Educ., & Research  
Found., 422 F.3d 1378, 1385, 76 USPQ2d 1354, 1360  
(Fed. Cir. 2005)(Court discussed difference between
legitimate reasons for refiling patent applications and
refilings for the business purpose of delaying the issuance
of previously allowed claims.). An examiner
should obtain approval from the TC Director before
making a rejection on the grounds of prosecution history
laches.

Revision as of 03:19, October 16, 2011

← MPEP 2186 ↑ MPEP 2100


2190 Prosecution Laches

Unreasonable and undue delay in prosecution will lead to rejection of claims under a theory that the applicant has forfeited his right to a patent under the doctrine of prosecution history laches. In re Bogese, 303 F.3d 1362, 1369, 64 USPQ2d 1448, 1453 (Fed. Cir. 2002) (Applicant "filed twelve continuation applications over an eight-year period and did not substantively advance prosecution when required and given an opportunity to do so by the PTO.").

While there are no firm guidelines for determining when laches is triggered, it applies only in egregious cases of unreasonable and unexplained delay in prosecution. For example, where there are "multiple examples of repetitive filings that demonstrate a pattern of unjustified delayed prosecution," laches may be triggered. Symbol Tech. Inc. v. Lemelson Med., Educ., & Research Found., 422 F.3d 1378, 1385, 76 USPQ2d 1354, 1360 (Fed. Cir. 2005).

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