The late Jerome H Lemelson is well known to numerous manufacturers, not only in the United States but all around the world. During his lifetime, Lemelson, who was the extremely litigious inventor-owner of a large number of patents granted by the United States and many other countries, was also famous for his pursuit of what are known in the United States as submarine patents. The term submarine, which is not unique to Lemelson patents, is based upon the fact that US patents so termed have matured from divisional or continuation applications of parent, grandparent, or even more remote ancestor patent applications filed, in some cases, 20 to 30 years before issuance of the submarine descendant patent.

Applications for the submarines thus lurked, undisclosed, under the secrecy provisions of 35 USC § 135 within the US Patent Office for years, but seemingly always suddenly issued after some device arguably blanketed by the submarine claims had become an outstanding commercial success. It must, in this connection, be remembered that prior to January 1 1995 the term of a US patent always commenced at the date of issuance (rather than the filing date of its first supporting application) and ran for 17 years thereafter.

As a consequence, Lemelson and the foundation he established late in his lifetime, the Lemelson Medical, Education & Research Foundation Limited Partnership, in some cases is said to have collected negotiated royalties for 17 years after issuance of a patent based on a parent application, and then continued to collect royalties at the same level on one or more submarine patents springing from divisional or continuation application progeny of the same original parent application for at least 17 additional years after they issued.

Since Lemelson and, later, his Foundation enjoyed considerable success in litigating Lemelson patents against infringers, many potential targets of Lemelson suits were happy to have the opportunity to accept licenses in lieu of suit, despite the unusual length of many payment periods.

On January 24 2002 the Court of Appeals for the Federal Circuit acting through a two judge majority of a three judge panel, rendered a decision suggesting that the Lemelson royalty saga may now be nearing an end, despite the 183 unexpired patents and many pending patent applications the Foundation allegedly still holds. Specifically, in Symbol Technologies Inc v Lemelson Foundation LP, 61 USPQ 2d 1515 (Fed Cir 2002), the Court reversed and remanded for trial a Nevada district court's dismissal of two declaratory judgment suits each seeking a declaration of invalidity, unenforceability and non-infringement (of 10 Lemelson US patents in one instance and six such patents in the other).

The premise of each of the dismissed complaints was that patent claims issued after an unreasonable and unexplained delay in prosecution, even one that facially complies with time limits set by statute, may be subject to a decree of invalidity or permanent unenforceability based on the equitable doctrine of laches.

To reach the conclusion that the complaints do state a claim for relief upon which relief can be granted, provided the proofs at trial justify the contentions pleaded in the complaint, the two-judge majority relied upon two Supreme Court decisions, Woodbridge v United States, 263 US 50 (1923) and Webster Electric Co v Splitdorf Electric Co, 264 US 463 (1924) and an article by one of the drafters of the 1952 Patent Act, the most recent Congressional revision of the entire United States Patent Code. The article, by PJ Federico, a long time US Patent Office official, is entitled Commentary on the New Patent Act and is based upon a series of lectures given between the 1952 enactment of the 1952 Act and its 1954 effective date, at locations across the United States, as part of an effort to educate patent practitioners' groups about the revised patent code. The Commentary was first published in the 1954 edition of 35 United States Code Annotated.

The two cited Supreme Court opinions relied on by the majority each held that a patentee, by designed delay in seeking the particular patent in suit, forfeited the right to the protection of that patent. The Federico Commentary points out that 35 USC § 282, as enacted in 1952, specifies "noninfringement, absence of liability for infringement, or unenforceability" as defences that may be pleaded in an infringement suit and that this statutory language embraces "the defenses such as that the patented invention has not been made, used or sold by the defendant, license; and the equitable defenses such as laches, estoppel and unclean hands "(61 USPQ 2d at 1519).

The dissenting judge expressed concern that "an applicant's full adherence to statutory procedures can nonetheless deprive the applicant, retrospectively, of a property right that was granted in accordance with law" (61 USPQ 2d at 1522). This, however, ignores the fact that the matter of whether any US patent "was granted in accordance with law" is always open to inquiry in a trial court. All US patents are presumptively valid under 35 US § 282 and are equally subject to a general presumption, applicable to all grants by governmental agencies of the United States, that they were regularly and properly granted pursuant to law. Both presumptions, however, are, by definition, always rebuttable by contrary evidence from persons attacking a patent in a court of law. By overlooking both the presumptions and their fundamental nature, the dissent succumbs to circular reasoning and adds little to the discussion.

The panel majority's ruling ? that so-called "prosecution laches" is a cognizable ground for holding a patent unenforceable ? is eminently correct under prevailing US law. It remains to be seen whether the district court, on remand, will conclude that the Lemelson conduct in obtaining at least some of the submarine patents identified in the resuscitated complaints amounted to the "designed delay" that forfeits the right to a patent.

Meanwhile, this situation is one which a considerable proportion of the world's patent-savvy people will no doubt be monitoring closely.

Mary Helen Sears