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PTO Can Reject Applications Based on Prosecution-History Laches

01-1354
September 13, 2002

Decision icon Decision

Last Month at the Federal Circuit - October 2002

Judges: Dyk (author), Prost, and Newman (dissenting)

In In re Bogese, No. 01-1354 (Fed. Cir. Sept. 13, 2002), the Federal Circuit affirmed the Board’s decision affirming an Examiner’s rejection that Steven B. Bogese II had forfeited his right to a patent under the doctrine of prosecution-history laches.

On June 14, 1978, Bogese filed an application relating to a connector for use with both miniature telephone plugs and printed circuit boards. In order to maintain pendency of the claimed invention, Bogese then began a pattern of filing continuation applications and appealing to the Board. Bogese would wait almost or exactly six months, file a continuation application without any amendments, and abandon his prior application. Bogese continued this pattern for the next sixteen years.

Finally, on August 22, 1994, the Examiner warned Bogese that the next continuation of this series might be rejected by invoking the equitable doctrine of laches. Despite this warning, on January 23, 1995, Bogese filed a file-wrapper continuation without making any amendment or argument regarding the claims that had been rejected.

The Examiner then rejected all the pending claims as obvious under 35 U.S.C. § 103 and declared that Bogese had forfeited his rights to a patent.

On September 18, 1995, for the first time, Bogese amended the claims and submitted affidavits. Bogese also argued that he had complied with the statutory authority of 35 U.S.C. § 120 in all respects and, thus, did not forfeit his right to a patent.

When the Examiner maintained the rejection, Bogese appealed. The Board sustained the Examiner’s rejections.

The Federal Circuit agreed with the Board that the PTO has the authority to reject applications for patents that would be unenforceable for prosecution-history laches. The Federal Circuit held that Symbol Technologies, Inc. v. Lemelson Medical, 277 F.3d 1361 (Fed. Cir. 2002), clearly recognized that the equitable doctrine of prosecution laches may bar enforcement of a patent that issues after an unreasonable and unexplained delay in prosecution, even though the patent applicant complied with pertinent statutes and rules. The Federal Circuit reasoned that the PTO should have broad authority to use the doctrine of prosecution laches to sanction undue delay, concluding that as the agency responsible for granting and issuing patents, the PTO has the authority to set reasonable deadlines and requirements for the prosecution of applications. Furthermore, the Federal Circuit found that Bogese had received ample notice from the PTO that his conduct could result in forfeiture. Therefore, the Federal Circuit agreed that the PTO properly asserted its authority and Bogese had forfeited his rights to a patent. Having so decided, the Court did not address the § 103 rejection.

Judge Newman dissented, arguing that there is no basis on which to grant authority to the PTO to impose its own nonstatutory time limits for examination purposes and to refuse to grant a patent on an otherwise patentable invention. In addition, since the doctrine of prosecution laches is an equitable remedy, she argued that the PTO was not the appropriate forum to apply the doctrine.