The Supreme Court Must Revisit Prosecution Laches—And the Industry Should Speak Up

The latest chapter in the long-running saga of inventor Gil Hyatt is beginning to unfold. The current fight is over prosecution laches—and whether the doctrine even exists.

In his last appeal to the Federal Circuit, Hyatt argued that prosecution laches is not available in Section 145 proceedings because it is inconsistent with the Patent Act of 1952, as confirmed by recent U.S. Supreme Court rulings in Petrella v. Metro-Goldwyn-Mayer (2014) and SCA Hygiene Products Aktiebolag v. First Quality Baby Products (2017). Whether Hyatt is correct about prosecution laches being inconsistent with the 1952 Patent Act, it is clear that the Supreme Court has unequivocally ruled in both Petrella and SCA that laches simply does not exist when there is a statutorily prescribed timeframe to act. In this case, as everyone familiar with the patent system knows well, there are both statutes and rules that give applicants a defined time within which to act. Therefore, it should have been easy for the Federal Circuit to rule in Hyatt’s favor and conclude that Petrella and SCA make prosecution laches a legal impossibility. Of course, that was not what the Federal Circuit ruled.

The Federal Circuit’s presumption that any patent taking more than six years to prosecute is presumptively unenforceable places the burden on patent owners to demonstrate as a threshold matter that the length of prosecution was reasonable. The presumption that any prosecution exceeding six years makes a patent presumptively unenforceable functionally turns Section 282 on its head, contorting the presumption of validity into a presumption of unenforceability.

Faced with a sadly predictable dead end at the Federal Circuit, Hyatt has now filed a petition for certiorari asking the Supreme Court to review—and ultimately reject—the Federal Circuit’s expansive and increasingly unworkable doctrine of prosecution laches. This is a direct challenge to a doctrine that has quietly but materially destabilized patent rights, introduced systemic unpredictability, and—if left unchecked—will continue to erode confidence in the U.S. patent system. Stakeholders who care about patent reliability, statutory integrity, and innovation incentives should not remain on the sidelines. The time to engage is now.

The Question Presented: A Direct Collision with the Patent Act

At its core, Hyatt’s petition asks a straightforward but consequential question: Can the United States Patent and Trademark Office (USPTO) invoke the equitable doctrine of prosecution laches to deny a patent to an applicant who has complied with every timing requirement set forth in the Patent Act?

The answer to the question seems obvious, but intelligent actors both inside the USPTO and at the Federal Circuit seem to be blinded by bias, or perhaps they just can’t see the forest for the trees. How could any rational actor actually rule that someone who has done everything required, in a timely manner, as defined by statute, has unreasonably delayed? How can it be unreasonable to take the time allowed by the law to act? Acting within the time allowed by the statute should carry an overwhelming presumption of timeliness. Instead, you can do everything required—and on time—and be presumed to have unreasonably delayed. That is absurd.

The Federal Circuit’s Expansion of Prosecution Laches

The current controversy did not emerge overnight. The Federal Circuit first recognized prosecution laches as a defense in Symbol Technologies v. Lemelson in 2002. Since then, the doctrine has metastasized. It now operates as a defense to infringement, a basis for rejecting claims during prosecution, and critically for Hyatt’s specific case as a defense in Section 145 actions seeking issuance of patents.

In Hyatt’s case, the Federal Circuit went even further, endorsing a sweeping, holistic inquiry into an applicant’s entire course of conduct and applying a presumption that prosecution delays exceeding six years are “unreasonable, inexcusable, and prejudicial.” How many cases are currently pending at the Office that have a priority filing date six years or older? How many patents have been issued on applications that were pending more than six years? Are all of them unenforceable? If you follow the logic of the Federal Circuit, the answer is yes, which is egregious and astonishing. Who made the Federal Circuit a super legislature that can ignore the statute and create out of whole cloth a non-statutory requirement that literally overrules the explicit statutory language?

The six-year presumption of unenforceability is not merely aggressive—it is structurally incompatible with how patent prosecution actually works.

The Reality Check: Applicants Do Not Control Prosecution Timing

The theoretical premise underlying prosecution laches is that applicants can “delay” prosecution. But that premise collapses under even the most modest scrutiny. Once an application is filed, the USPTO controls the pace of examination. Applicants are given defined statutory windows within which to respond. If they meet those deadlines, they are compliant—period.

As previously documented, the notion that applicants control prosecution timelines is not just incorrect—it leads to untenable outcomes. Even more troubling, real-world evidence demonstrates that delays are not always visible, explainable, or attributable to applicants.

The USPTO’s now-infamous Sensitive Application Warning System (SAWS) programs—both the original version (1994–2015) and its more recent iteration—highlight a critical flaw in the prosecution laches framework.

These SAWS programs flagged applications for heightened scrutiny, delayed or blocked issuance without any notice to the applicant that their applications were caught up in regulatory purgatory, and they operated outside the public record in complete secret for years. Applicants caught in these programs had no visibility into why their applications stalled—making it impossible to explain or justify delays later attributed to them.  In other words, the system-imposed delay while simultaneously holding applicants accountable for it.

That is not a legal standard. That is a structural defect. In what universe can it make any sense to place the impossible burden on a patent applicant or patent owner to demonstrate the alleged delay was reasonable if the USPTO itself operated a covert program that was unknown to the applicant, the public, the courts and Congress? If no one knows what the USPTO is doing how in the world can the Federal Circuit place this impossible burden on the patent owner?

Why Amicus Participation Matters Now

Hyatt’s cert. petition presents a rare opportunity to reset the law. Of course, Supreme Court review is discretionary and not guaranteed. The Court is more likely to grant certiorari when it sees broad-based concern about an issue. That is where the patent community comes in.

I can see multiple avenues for meaningful amicus engagement, including focusing on the following:

• The enormous number of issued patents and pending applications that are rendered unenforceable under the Federal Circuit’s six-year presumption.
• The destabilizing effect of prosecution laches on patent portfolios.
• The doctrinal conflict with the Patent Act and Supreme Court precedent.
• The threat to continuation practice and long-standing prosecution strategies.
• The improper expansion of agency authority beyond statutory limits.

There are, of course, a variety of other things that can be argued based on prosecution laches directly contradicting the Patent Act and Supreme Court precedent.

Amicus briefs are due within 30 days of docketing. The petition was filed on March 2, making early April the deadline to file an amicus brief. Thus, the time to act is now!

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