In a recent case, the Federal Circuit addressed the question of when to apply the doctrine of prosecution laches to invalidate a patent. In Cancer Research Technology Ltd. v. Barr Labs and Barr Pharmaceuticals, the Federal Circuit held that in order to establish that a patent is invalid based on prosecution laches requires the following: 1) an unreasonable delay in prosecuting the patent; and 2) intervening rights by a third party.
Cancer Research Technology Ltd., (“CRTL”) took over a patent that had nine different continuation applications and nine different abandoned applications. Each time the USPTO issued an Office Action raising a utility objection, the applicant abandoned the application and filed a new continuation application. After extending the application for another two years, CRTL, was able to make significant advancements in the development of the claimed drug to enable it to respond to the utility rejection by the USPTO.
Based on the new data from the advancements in the development of the claimed drug, CRTL, was able to over the utility rejection and get the patent issued. The Federal Circuit considered the Supreme Court’s precedent in Woodbridge and Webster, and held that intervening rights were also required to apply the equitable doctrine of prosecution laches to invalidate CRTL’s patent.
Prosecution laches attempts to prevent a patentee from purposely and unduly postponing the time when the public could enjoy the free use of the invention. This is a flexible test to attempt to further the equitable principles behind it. However, it is not clear if requiring intervening rights furthers the policies behind the prosecution laches doctrine. Certainly, allowing a patentee to file nine continuation applications before substantively responding to the utility rejections seems to raise concerns about a purposeful effort to delay the use of a drug that may be used by the public earlier.
However, if no one else has developed the drug claimed by the patentee (CRTL), then perhaps allowing it to continue the development of the drug to substantively respond to the utility rejection may allow the public to benefit from the development of the drug. In other words, allowing for intervening rights, means that if someone else has developed the claimed drug prior to CRTL, then the public would benefit by allowing it to use the developed drug.
However, if no one else has developed the claimed drug, then allowing CRTL, to continue drug development in the hopes of being able to effectively respond to the utility rejection may help the public get the claimed drug sooner. Thus, the Federal Circuit may have appropriately struck the balance between providing an incentive to the patentee, others and the public to allow for a fully developed version of the claimed drug.
For additional info see: Prosecution Laches-030511