STATUTE OF LIMITATIONS AND LACHES IN IP INFRINGEMENT
A six-year "lookback period" to limit is imposed under 35 USC §286 on a patent infringement action.
35 USC §286 states(2): "Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infri
Doctrine of Laches(3)Laches is based on the legal maxim "Equity aids the vigilant, not those who slumber on their rights." Laches recognizes that parties to an action can lose evidence, witnesses, and a fair chance to defend themselves after the passage of time from the date the alleged wrong was committed. The basis of equity is contained in the Maxim "Equity will not suffer an injustice." Other maxims present reasons for not granting equitable relief. Laches is one such defense. Laches is a defense in a proceeding for equitable relief. Cases in Equity are distinguished from cases at law by the type of remedy, or judicial relief, sought by the plaintiff. Generally, law cases involve a problem that can be solved by the payment of monetary damages. Equity cases involve remedies directed by the court against a party. Types of equitable relief include Injunction, where the court orders a party to do or not to do something; declaratory relief, where the court declares the rights of the two parties to a controversy; and accounting, where the court orders a detailed written statement of money owed, paid, and held. Courts have complete discretion in equity, and weigh equitable principles against the facts of the case to determine whether relief is warranted.
Statute of Limitations(4)A statute of limitation is a law which forbids prosecutors from charging someone with a crime that was committed more than a specified number of years ago. The general purpose of statutes of limitation is to make sure convictions occur only upon evidence that has not deteriorated with time. The law encourages a speedy resolution for every dispute. Cases in law are governed by statutes of limitations, which are laws that determine how long a person has to file a lawsuit before the right to sue expires, whereas laches is the equitable equivalent of statutes of limitations. The copyright statute has a three-year statute of limitations on filing a suit. In Petrella(5), the Supreme Court observed that the Copyright Act ("Act") contains a statute of limitations that provides: "No civil action shall be maintained under the Act unless it is commenced within three years after the claim accrued"(citing 17 U.S.C. ?507(b)). The Court further observed that "each infringing act starts a new limitations period." Thus, under the Act an infringer may be liable for damages that accrued during the three years prior to filing suit but is insulated from liability for earlier infringements of the same work. The Court noted that the "principle application" of laches is "to claims of an equitable cast for which the Legislature has provided no fixed time limitation," and that "in face of a statute of limitations enacted by Congress, laches cannot be invoked to bar legal relief." The Court left open the possibility that delay by the plaintiff might impact equitable relief, such as an injunction and disgorgement of profits. In SCA Hygiene Products(6), the Federal Circuit preserved the defense of laches for patent cases even though the Supreme Court eliminated that defense in copyright cases. This means that an accused infringer may be able to raise a patent laches defense in a suit brought within the 6 year period of 35 USC ? 286. The court also held that laches can prevent an injunction, but made clear that in such a case the infringer could be required to pay an ongoing royalty. In Auckerman(7), the Federal Circuit held that laches may apply to bar a damages claim if the accused infringer proves by a preponderance of the evidence that a patentee unreasonably and inexcusably delayed filing an infringement suit, to the material prejudice of the accused infringer. Even when these two elements are proven, the court retains discretion to determine whether laches should be applied. Under Auckerman, when laches is applied, it bars all retrospective relief for damages that accrued prior to filing suit, but does not bar prospective relief or damages that accrue after suit is filed.
ConclusionAll claims must be made in a reasonable time frame from when you knew about the claims, while some claims may have to be brought in a specific period because of a statue-of-limitations. The Doctrine of Laches is avoidable by getting a legal advice from an attorney at the time a legal question is raised.