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By Compiled by Kathlyn Card-Beckles

Unreasonable Delay Results in Holding that Lemelson Patents are Unenforceable

In Symbol Techs, Inc. v. Lemelson Med. Educ., 2004 U.S. Dist. LEXIS 1499 (D. Nev. 2004), the district court held that Lemelson's patents were unenforceable due to prosecution laches, where a patentee's right to claims can be forfeited if issued after an unreasonable delay in prosecution. The forfeit is possible even if a patentee complies with all of the statutes and rules. Patents invented by the late Jerome Lemelson are notorious for their length of prosecution time. In fact, Lemelson holds the top 13 positions for the longest patent prosecution time. The Lemelson patents at issue in the Symbol case were based on two applications filed in 1954 and 1956. Through continuation applications, filing delays and other prosecution delays, ranging in some cases from 18 to 39 years, the specification in the original application was modified to encompass practices used by the public. As a result, when the patents finally issued, Lemelson claimed that most of the practices in the bar code industry that previously had been freely practiced, infringed his patents. The court held that the delays in the prosecution were prejudicial to those in the industry, unexplained and unreasonable, and held that even though no laws were broken, the patents were unenforceable.

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