Supreme Court of the United States · Official docket →
Gilbert P. Hyatt v. John A. Squires, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office
Paid petition · United States Court of Appeals for the Federal Circuit, No. 2018-2390, 2018-2391, 2018-2392, 2019-1049, 2024-1992, 2024-1993, 2024-1994, 2024-1995, 2019-1038, 2019-1039, 2019-1070 · judgment August 29, 2025
Before the decision, well below the 4.1% base rate, with no standout signals pointing toward a grant.
Question presented
Congress has enacted a comprehensive set of legal rules governing the timing of each step in the patent examination process. Yet, invoking the doctrine of “prosecution laches,” the Patent and Trademark Office (“PTO”) claims an equitable power to refuse to issue a patent, even when the applicant (as in this case) has met all the statutory requirements. Two decades ago, the Federal Circuit approved the doctrine in a pair of split decisions. Since then, this Court has twice held that laches is a limited “gap-filling doctrine” that does not apply when, as here, Congress has filled the gaps with statutory timelines. SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 580 U.S. 328, 335 (2017); see also Petrella v. Metro-GoldwynMayer, Inc., 572 U.S. 663, 679 (2014). The Federal Circuit has nevertheless stood by its “prosecution laches” doctrine. The question presented is: 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.
Counsel of record
For petitioner
Martin J. Black
Dechert LLP
For respondent
D. John Sauer
Solicitor General
Case
Conference history
Distributed for 1 conference
Amicus briefs
4 cert-stage
Proceedings
- Aug 13 2026DISTRIBUTED.
- Jul 24 2026Petition for Rehearing filed.
- Jun 29 2026Petition DENIED.
- Jun 09 2026DISTRIBUTED for Conference of 6/25/2026.
- Jun 05 2026Reply of petitioner Gilbert P. Hyatt filed. (Distributed)
- May 26 2026Brief of respondent John A. Squires in opposition filed.
- Apr 28 2026Motion to extend the time to file a response is granted and the time is further extended to and including May 26, 2026.
- Apr 27 2026Motion to extend the time to file a response from May 4, 2026 to May 26, 2026, submitted to The Clerk.
- Apr 06 2026Brief amicus curiae of Dr. Ron D. Katznelson filed.
- Apr 03 2026Brief amici curiae of US Inventor, et al. filed.
- Apr 03 2026Brief amici curiae of National Association of Patent Practitioners, Inc., et al. filed.
- Apr 03 2026Brief amici curiae of Small Business Technology Council, et al. filed.
- Apr 01 2026Motion to extend the time to file a response is granted and the time is extended to and including May 4, 2026.
- Mar 30 2026Motion to extend the time to file a response from April 3, 2026 to May 4, 2026, submitted to The Clerk.
- Mar 02 2026Petition for a writ of certiorari filed. (Response due April 3, 2026)