On March 2, 2026, Mr. Gilbert Hyatt, owner of 75 patents, filed a petition for writ of certiorari with the Supreme Court challenging the Federal Circuit's affirmance of the USPTO's denial of Mr. Hyatt's patent applications on the basis of “prosecution laches,” which can prevent enforcement (and in some cases issuance) of patents after an unreasonable delay by the applicant. 

The petition presents a (seemingly) straightforward question:  Whether the PTO may invoke the equitable doctrine of “prosecution laches” to deny a patent to an applicant who has complied with all the Patent Act’s timeliness provisions. 

Respondent (in this case, the United States Patent and Trademark Office) currently has 30 days to submit its opposition, though this deadline may be extended. 

Should the Supreme Court decide to take up the case, it could affect enforcement of various patents whose prosecution took more than 6 years before the USPTO. 

Prosecution Laches

The doctrine of prosecution laches is a judicially created “gap-filling” doctrine which exists both as 1) a defense to patent infringement and 2) a basis for rejection before the USPTO. It can apply where the patent owner engaged in “unreasonable and unexplainable delay in prosecuting the applications at issue” and, as a result, the party asserting the doctrine can show “the delay was prejudicial.” 

Where the delay in prosecution is six years or more, the Federal Circuit has held that there exists a presumption that the delay “is unreasonable, inexcusable, and prejudicial,” consistent with similar holdings with respect to any laches defense, not just prosecution laches. In such circumstances, the burden of proof moves to the patent owner/applicant to show that the delay was reasonable, excusable, or non-prejudicial. 

Many prosecution laches defenses apply to so-call “GATT Bubble” applications, which are applications that were filed shortly before the U.S.'s change in patent term on June 8, 1995—in which the term of a patent was changed from 17 years following the date of issuance of the patent to instead 20 years following the earliest non-provisional filing date. This led to the creation of “submarine patents," by which applicants would keep pre-GATT applications alive through a process of abandoning and filing continuations until a financially advantageous time—when a patent owner could take advantage of 17 years of patent term from the date of issuance, rather than rely on the filing date to determine term.

Though the doctrine is usually applied in the context of these GATT Bubble applications, the Federal Circuit has consistently refused to limit the doctrine to only those applications and patents. 

Petition Arguments

The petition presents several arguments against the Federal Circuit's (and District Court's) application of prosecution laches against the Petitioners application. Primarily, the argument in favor of granting the petition focuses on points:

• The doctrine of prosecution laches itself is in conflict with Court precedent and should be eliminated; and
• This case provides an excellent vehicle for resolving the question and clarifying the doctrine's application.

The below is a brief summation of the arguments presented in the petition (without regarding to their respective merits).-

I. The Court Should Grant Review to Reject the Judge-Made Doctrine of Prosecution Laches

A. Prosecution Laches Conflicts with the Patent Act's Text and Supreme Court Precedent

Petitioner argues that the doctrine of prosecution laches directly conflicts with the Supreme Court's prior precedents in Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014) and SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 580 U.S. 328 (2017) , both of which hold that laches (though in the context of litigation laches) is a limited "gap-filling doctrine" unavailable where Congress has enacted timeliness rules. Because the Patent Act contains comprehensive timing provisions governing patent prosecution from start to finish—including deadlines for filing applications, filing continuations, responding to office actions, and seeking judicial review—there is "no gap to fill" and courts cannot exercise their own assessments of timeliness to override Congress's judgment. 

The petition further argues that this conflict is particularly acute with respect to continuation practice, because 35 U.S.C. § 120 expressly provides that timely filed continuation applications "shall have the same effect . . . as though filed on the date of the prior application," Federal Circuit's laches doctrine purportedly allows courts to negate this statutory framework. Petitioner also contends that prosecution laches cannot be sustained as a background common-law principle that Congress expected to apply, because there was no recognized doctrine of "prosecution laches" in English common law, in Chancery, or in Supreme Court jurisprudence before the Patent Act was enacted in 1952. The petition carefully examines the historical cases the Federal Circuit relied upon—including Woodbridge v. United States, Webster Electric Co. v. Splitdorf Electric Co., Crown Cork & Seal Co. v. Ferdinand Gutmann Co., and General Talking Pictures Corp. v. Western Electric Co.—and argues that none actually established a prosecution laches doctrine, and each instead confirmed that statutory timing provisions control. 

B. The PTO's Assertion of Prosecution Laches Further Conflicts with the Patent Act's Text and Court Precedent

The Petitioner goes on to argue that even if prosecution laches were theoretically available as a defense in infringement litigation, it would not follow that the USPTO itself could rely on the doctrine to deny the issuance of a patent directly (rather than relying on ostensible defendants to assert the defense during litigation). Administrative agencies "possess only the authority that Congress has provided," and therefore there is no statutory grant authorizing the PTO to assert laches. Nat'l Fed'n of Indep. Bus. v. OSHA, 595 U.S. 109, 117 (2022). To the contrary, the Patent Act's mandate that the PTO "shall" issue patents upon satisfaction of statutory "conditions and requirements" precludes such discretion. The petition points to Congress's enactment of the “Uruguay Round Agreements Act” which led to the surge in GATT Bubble application, as addressing long-pending applications by directing the PTO to provide further limited reexamination rather than authorizing the PTO to deny applications for laches. Additionally, Petitioner's points to the USPTO's own Board of Patent Appeals and Interferences as stating, in 1992, that "laches does not apply to an application pending in the Patent and Trademark Office." 

C. The Federal Circuit's Standard for Prosecution Laches Underscores Its Arbitrary Nature

Petitioner finally argues that the Federal Circuit's prosecution laches doctrine has drifted far from any traditional or predictable equitable doctrine. Rather than assess delay in prosecuting the specific application at issue, the court has embraced a "totality of the circumstances" approach that scrutinizes anything the applicant has done across the broader patent system—irrespective of the individualized circumstances for each application. Additionally, the court's six-year presumption of unreasonable delay—according to the Petitioner, borrowed from a damages limitations period in 35 U.S.C. § 286 —shifts the burden from the party asserting laches to the applicant, contradicting the statutory presumption that "a patent shall be presumed valid." Petitioner also contends the prejudice element has been hollowed out, because the Federal Circuit allowed the USPTO (which is not a private rightsholder) to claim prejudice based on generalized "administrative burden" rather than the specific "evidentiary or economic" prejudice traditionally required. 

II. The Question Presented Is of Great Importance, and This Case Offers an Excellent Vehicle

In addition to the supposed inapplicability of the doctrine as a whole, Petitioner also argues specifically that the Federal Circuit's prosecution laches doctrine has far-reaching consequences—consequences which the Supreme Court should now take the opportunity to address. Petitioner asserts that nearly twenty percent of all continuation patent applications have filing dates more than six years after their earliest priority date, and over a third of the patents protecting the most successful pharmaceutical products do as well. The doctrine, as applied according to the Petitioner, could jeopardize rights of patentholders and applicants nationwide, creates massive uncertainty in industries worth billions of dollars, and has triggered a surge in litigation since the Federal Circuit's 2021 decision, with prosecution laches being asserted in hundreds of patent cases. 

Finally, Petitioner contends this case is an ideal vehicle for review because it presents a clean question of law that was fully vetted below, with no preservation issues, and the question is outcome-determinative—the District Court found Petitioner entitled to patents after a full trial, and the Federal Circuit vacated that judgment solely on prosecution laches grounds. The Federal Circuit has made clear it will not reconsider its prosecution laches precedents, having declined to rehear the case en banc. 

Conclusion

Though it will likely be months before the Supreme Court decides whether or not to grant the petition, and months more before a decision on the merits, the case could have wide-ranging implications for both ongoing prosecution practice and patent assertion. 

Our team will be monitoring this case with interest as arguments commence.