Continuation Drafter
Tier D: timing, laches, and the new carrying costs
6 authorities. Each is quoted from its primary source and checked against a cached copy.
Six years of unexplained delay moves the burden
The Federal Circuit held that where the Patent Office shows unreasonable and unexplained prosecution delay exceeding six years, the burden shifts to the applicant to prove the absence of prejudice, and defined prejudice as intervening investment in the claimed technology.
An infringed patent can still be unenforceable
The Federal Circuit affirmed that a patent a jury had found infringed was unenforceable for prosecution laches, because the patentee's delay was unreasonable and inexcusable under the totality of the circumstances and the accused infringer was prejudiced by it.
Delay alone did not carry it
The Federal Circuit reversed a judgment that had held long-pending patents both invalid for lack of written description and unenforceable for prosecution laches, restating that laches requires unreasonable and inexcusable delay plus prejudice attributable to it.
Late continuations now carry a surcharge
From 19 January 2025 a nonprovisional application whose actual filing date is more than six years after its earliest benefit date owes an additional fee, at one rate between six and nine years and a higher rate beyond nine, payable when the benefit claim that triggers it is presented.
One year, not two, before you must explain the delay
From 13 August 2026 the USPTO requires an additional explanation of the circumstances surrounding a delay whenever a petition based on unintentional delay is filed more than one year after the action was due, down from two years, and the higher petition fee threshold moved to match.
An already-expired patent is worth nothing, including provisionally
The Federal Circuit held that provisional rights under Section 154(d) arise only where the patent would issue with exclusionary rights, so an application whose patent would issue after the term had already run produced no rights at all and the appeal had no jurisdictional basis.