Why Petrella and SCA Hygiene Protect Against Equitable Defenses of Prosecution Laches

The Supreme Court rejected equitable defenses of laches in infringement suits, reasoning that by enacting a statute of limitation, Congress left no statutory “gap” for equitable judgments on timeliness. See Petrella v. Metro-Goldwyn-Mayer (2014), and SCA Hygiene Prods. v. First Quality Baby Prods (2017). These precedential holdings should have also governed U.S. Court of Appeals for the Federal Circuit (CAFC) decisions on prosecution laches in Hyatt v. Hirshfeld (2021) and in Hyatt v. Stewart (2025), particularly after the multiple briefings in the Hyatt case on the binding effect of such holdings. Yet, nowhere in these decisions can one find any reasons why the principles in SCA Hygiene and Petrella should be inapplicable for precluding prosecution laches.

Some commentators have reasoned that prosecution laches is different from laches in bringing infringement suits because only the latter have statutes of limitation. Dennis Crouch’s recent article, “Hyatt v. Stewart: Why Petrella and SCA Hygiene Don’t Save Long-Delayed Patent Prosecutions,” is such an example, with the following explanation: “I think Hyatt loses this one because there is no statute of limitations governing the overall patent prosecution timeline.” Crouch’s article posits: “Unlike Hyatt’s pre-GATT applications, which benefit from the old 17-year-from-issuance term system where prosecution delays actually extend the total monopoly period, post-URAA applicants face a built-in temporal constraint: every day spent in prosecution is a day lost from the patent’s enforceable life.”

This purported distinction is wrong, as it ignores a salient aspect of the Uruguay Round Agreements Act (URAA) in which Congress left no timeliness requirement “gap” even for transitional pre-GATT applications such as Hyatt’s. While the URAA does not set an absolute numerical time limit for prosecuting pre-GATT applications, it limits the total duration of prosecution for pre-GATT applications by setting a limit of two continuation-equivalent “submissions” for such applications after the effective date of the URAA (June 8, 1995). This two “submission” limit was Congress’ compromise modality for implementing a hard timeliness requirement, relying on the statutory limit on duration of prosecution of each “submission.”

How Congress Left No Room for Prosecution Laches Defense Against Pre-GATT Applications

In 1994, Congress tightened timeliness requirements going forward by counting patent term from the priority filing date rather than issuance date. Fairness dictated that it could not impose such requirement retroactively on pending applications with original priority dates before the URAA’s effective date (June 8, 1995). This is because their resulting enforceable patent life would have been much shorter than 17 years, particularly for continuing applications filed after June 8, 1995. Doing so would have unfairly prejudiced applicants who had earlier agreed to participate in the patent bargain when assuming they would receive full rights under 35 U.S.C. §§ 120-121 and receive patents in force for 17-years. So what could have Congress done to allow reasonable practices for continuations and divisions while preserving their 17-year patent term, and yet subject them to reasonable timeliness requirement?

To be sure, Congress relied on the statutory limit on duration of prosecuting a single submitted application to final action, considering that applicants must reply to Office actions “within 6 months,” 35 U.S.C. § 133, and that ever since the enactment of Patent Office examination, Congress’ framework called for concluding prosecution on the second Office action. Section 7 of the 1836 Patent Act provided that following a first Office action rejection, “if the applicant in such case shall persist in his claim for a patent, with or without any alteration of his specification, … [a]nd if the specification and claim shall not have been so modified as, in the opinion of the Commissioner, shall entitle the applicant to a patent, he may, on appeal, and upon request in writing, have the decision of a board of examiners.” This embodied Congress’ express direction for “compact” prosecution prior to appeal, where the applicant is given only one opportunity to amend the application to satisfy the Commissioner, making the second Office action final. That Congressional intent was rephrased in the Patent Act of 1870, and today codified in 35 U.S.C. § 132(a) as a right of appeal by “[a]n applicant for a patent, any of whose claims has been twice rejected.” Therefore, applicants cannot prolong prosecution of a single given application because “[o]n the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final.” 37 C.F.R. § 1.113(a).

Therefore, the timeliness focus in the URAA was confined to continuing application practice that is under applicants’ control. It was recognized that applicants of transitional applications that are entitled to 17-year patent term from issuance would not lose patent term if after the final action they could reopen prosecution in the same application and make a “submission” that is equivalent to a continuing application, akin to the old “File-Wrapper Continuation” practice. Given the U.S. Patent and Trademark Office’s (USPTO’s) control over prosecution duration of each “submission,” limiting the number of such “submissions” achieves the overall timeliness goal for transitional pre-GATT applications.

Accordingly, the URAA directs the USPTO “to provide for further limited reexamination” of pending transitional pre-GATT applications. URAA § 532(a)(2)(A). The associated Statement of Administrative Action (approved by the Congress under 19 U.S.C. § 3511(a)(2) as part of the URAA) provides: “The further limited reexamination will permit applicants to present for consideration a submission after the [USPTO] has issued a final rejection on an application.” H.R. Doc. No. 316, 103d Cong., 2d Sess., Vol. 1, (Sept. 27, 1994) (SAA) at 1005. It further provides that “the [USPTO] will consider on the merits the first and second such submissions.” SAA at 1006. This subjected transitional pre-GATT applications to a statutory hard limit of two URAA “submissions” equivalent to two continuing applications. See 60 Fed. Reg. 20195, 20214 (Apr. 25, 1995) (“The filing of the submission and the fee under § 1.129(a) is equivalent to the filing of a continuation application and will be treated in the same fashion”).

Congress also ensured the opportunity for transitional application applicants to respond to a requirement for restriction or for the filing of divisional claims without actually filing a divisional application after June 8, 1995, that would otherwise lose patent term. It directed that after June 8, 1995, “the [USPTO] will not make or maintain a requirement for restriction or the filing of a divisional application for an application that has been pending for three years or longer as of [June 8, 1995], taking into account [the priority date].” SAA, at 1006. Here, the USPTO was authorized instead to charge “an appropriate fee for examination of each independent and distinct invention in an application in excess of one.” SAA, at 1006. Congress was aware of pre-GATT applications that had been pending for many years and specifically “excused” all such applications “pending for three years or longer,” including through continuing applications, by giving them a limited opportunity for only two additional “submissions.”

Nevertheless, Congress provided specific exceptions that would deny protection to pre-GATT applicants from restriction requirements in cases where applicants did have some control over divisional claiming prior to June 8, 1995: “This limitation does not apply if such a [restriction] requirement was first made in such application or a predecessor application more than two months prior to [June 8, 1995], or if there has not been at least one [USPTO] action due to actions by the applicant.” SAA, at 1006 (my emphasis). The USPTO implemented these URAA transitional rules in 37 C.F.R. § 1.129.

Congress chose a specifically-tailored, detailed modality for balancing fairness for applicants and timeliness requirements for protecting the public interest in the URAA. It did so for pre-GATT applications by fair and reasonable means subject to specific parameters. As the Supreme Court remarked elsewhere, the detailed provision, “its technical language, the iteration of the limitations in both procedural and substantive forms, and the explicit listing of exceptions, taken together, indicate to us that Congress did not intend courts to read other unmentioned, open-ended, ‘equitable’ exceptions into the statute that it wrote. There are no counterindications.” United States v. Brockamp, 519 U.S. 347, 352 (1997).

This elaborate modality for timeliness fits the principle in SCA Hygiene and Petrella that is more general than merely relying on absolute number of years as statutes of limitation—their holding is about delineation of Congressional powers from judicial equitable powers in setting timeliness requirements: “Petrella‘s holding rested on both separation-of-powers principles and the traditional role of laches in equity.” SCA Hygiene, 580 U.S. at 328. The separation-of-powers principle means that there is no “gap” to fill where Congress covers the field, regardless of its choices for doing so. Therefore, the principles in SCA Hygiene, Petrella, and Brockamp are general and fully applicable to the various modalities that Congress chose for covering timeliness requirements to the exclusion of laches for all patent applications, including transitional pre-GATT applications.

Congress Expressly Clarified That Applicants Complying with Statutory Timeliness Requirements Cannot Lose Their Patent Right

Congress consistently left no policy choices on timeliness to judges’ equitable powers to force forfeiture of patent rights. This was further evident when Congress expressly clarified the consequences with respect to any delays in prosecution. In the American Inventors Protection Act of 1999 (AIPA), Congress provided for patent term guarantees to applicants through Patent Term Adjustment (PTA) credit in 35 U.S.C. § 154(b)(1) to compensate for USPTO delays. Most importantly, Congress expressed its choice of the specific modality for regulating applicants’ timeliness, by providing that applicants’ PTA credit will be reduced by “the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.” § 154(b)(2)(C)(i) (my emphasis). By this, Congress made explicit the extent of applicants’ loss due to failure “to engage in reasonable efforts to conclude prosecution”—an applicant who complies with statutory and regulatory timeliness requirements cannot lose the entire patent right itself. This serves as a legislative clarification of the consequences Congress intended all along for what the USPTO deems “unreasonable delay.” See Branch v. Smith, 538 U.S. 254, 281 (2003) (subsequent statute in pari materia may clarify earlier statute’s meaning).

Accordingly, when a post-AIPA applicant complies with statutory and regulatory timeliness requirements, a court cannot force forfeiture of the patent right under prosecution laches. Moreover, pre-AIPA and post-AIPA applicants who complied with statutory and regulatory timeliness requirements are alike in all relevant respects as to delay. Judicially imposed doctrines cannot create unequal treatment of pre-AIPA and post-AIPA applications where Congress clarified that forfeiture was not the intended consequence. Village of Willowbrook v. Olech, 528 U.S. 562, 564 (2000) (Equal protection right must apply where plaintiff has been treated differently from others similarly situated and where there is no rational basis for the difference in treatment). Under the principles in SCA Hygiene, Petrella, and Brockamp, there is no room for the courts to displace Congress’ specific policy choice on timeliness, even when “the lack of a laches defense could produce policy outcomes judges deem undesirable.” SCA Hygiene, at 335, n.4.

Throughout, Congress left no “gap” or stone unturned by its choice of modalities for fairly enforcing timeliness requirements, including by the administrative framework that Congress authorized the USPTO to implement. The importance of USPTO regulations in this regard is detailed in the Small Business Technology Council’s (SBTC) Amicus brief in support of rehearing en banc in this Hyatt case. In its brief, SBTC details 132 USPTO rules for regulating timeliness, including 37 C.F.R. § 11.18 for preventing “unnecessary delay or needless increase in the cost of any proceeding before the Office.” SBTC also shows that the CAFC precedential holdings in Hyatt render 30% of US patents presumptively unenforceable for prosecution laches.

The CAFC should grant rehearing en banc to correct its two Hyatt panel decisions.

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