Last week, the annual patent portfolio management program was held, focusing on the importance of continuations in growing and maintaining a patent portfolio for companies. While the topic of prosecution laches may seem mundane at first, it has become a significant issue in the world of intellectual property.
Prosecution laches, which involves unreasonable and unexplained delays in patent prosecution, has recently been a hot topic due to a case involving Sonos and Google. The district court found Sonos patents unenforceable due to prosecution laches because Sonos filed a continuation, even though the claims were supported by an earlier filing. This decision is currently being appealed to the Federal Circuit.
It is essential to understand that the filing of a continuation should not lead to a finding of laches, as patent owners have the statutory right to file continuations. The USPTO has been ordered not to interfere with continuation practice, which has been in place for a long time.
Interestingly, while the focus has been on the timing of filing claims in a continuation, little attention has been given to the fact that examiners often require additional filings before granting the full scope of claims an applicant is entitled to. This practice can lead to delays in prosecution, which should not necessarily result in prosecution laches.
In cases where prosecution laches is invoked, it should only apply to instances of egregious delay that have caused prejudice to the accused infringer. However, recent decisions have shown that the requirement of proving prejudice is sometimes overlooked, leading to findings of laches without sufficient evidence.
In light of these developments, it is crucial for companies to understand how to navigate the complexities of patent prosecution and the potential implications of prosecution laches. Adding patents through continuations remains a critical strategy for innovators to protect their intellectual property rights.
During the program, Dean Geibel, Chief Patent Counsel for Samtec, Inc., and Eric Foster, Intellectual Property Counsel for First Solar, Inc., shared their insights on this issue. It is important for companies to stay informed about the evolving landscape of patent law and take proactive steps to protect their innovations in the face of prosecution laches.