2190 Prosecution Laches and Res Judicata
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I. PROSECUTION LACHES
The Federal Circuit affirmed a rejection of claims in a patent application on the ground that applicant had forfeited his right to a patent under the doctrine of prosecution history laches for unreasonable and undue delay in prosecution.
II. RES JUDICATA
A patent owner or applicant may be precluded from seeking a claim that is not patentably distinct from a claim that was finally refused or canceled during an administrative trial or federal court proceeding under the doctrine of res judicata.
- Similarly, a patent owner may be precluded from seeking an amendment of a specification or drawing that was denied entry during a trial if the application or patent for which the amendment is sought has the same written description as the patent or application that was the subject of the administrative trial or federal court proceeding.
A patent owner or applicant may be precluded from seeking a claim that is not patentably distinct from a claim that was previously rejected if the rejection was affirmed on appeal and the decision on appeal became final.
- A res judicata rejection should be applied only when the earlier decision was a decision of the Patent Trial and Appeal Board (or its predecessor Board) or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decision.
