The comment examines prosecution history laches as an infringement defense in the context of the pending litigation against the Jerome Lemelson Medical Education & Research Foundation. Jerome Lemelson amassed over five hundred patents during his lifetime. Of these, a few key patents have priority based on initial disclosures over forty years ago. Through multiple continuances however, the patents were not issued until decades later and are thus currently enforceable. Lemelson’s foundation has been aggressively seeking royalties based on these, so called “submarine patents,” against bar-code technology users. This comment discusses the problems posed by “submarine patents” and proposes guidelines for the application of prosecution history laches as a defense against their infringement.
Gregory F. Sutthiwan, Prosecution Laches as a Defense to Infringement: Just In Case There Are Any More Submarines Under Water, 1 J. Marshall Rev. Intell. Prop. L. 383 (2002)