dissenting.
The Patent Act and implementing regulations authorize the filing of continuing applications provided that certain requirements are met. Heretofore, there has been no cause of action whereby a paten-tee who fully complied with the statute and rules must nonetheless defend the charge that he should have done more than the statute and rules require.
The rules for continuing applications have often been considered by practitioners, and were before Congress and the draftsmen of the 1952 Patent Act. The legal requirements for continuing applications embodied in 35 U.S.C. §§ 120 and 121 do not warn that there will be serious risks of forfeiture to those who comply with these legal requirements. As the district court correctly held, “the court should not intervene in equity to regulate what Congress has not.” Symbol, slip op. at 13; see Northwest Airlines, Inc. v. Transport Workers Union of America, 451 U.S. 77, 97 n. 41, 101 S.Ct. 1571, 67 L.Ed.2d 750 *1369(1981) (“The equitable considerations advanced by petitioner are properly addressed to Congress, not to the federal courts.”). Nonetheless, my colleagues on this panel have chosen to intervene, creating a new equitable cause of action called “prosecution laches.” This judicial creation of a new ground on which to challenge patents that fully comply with the statutory requirements is in direct contravention to the rule that when statutory provisions exist they may be relied on without equitable penalty. Id. I must, respectfully, dissent.
The long-standing rule, until today, is that when the statutory requirements for continuing applications are met, patents are not subject to attack on non-statutory grounds. It simply adds to the uncertainties of the patent grant, to create a new cause of action whereby routine actions, in full statutory compliance, can years later be challenged as having been done too late or having taken too long. The consequences of this new cause of action of “prosecution laches” have not been explored, for this court is presented' only with the concerns of those charged with infringing these Lemelson patents. However, the consequences are not limited to this case, but will open legally granted patents to a new source of satellite litigation of unforeseen scope, for the continuation practice is ubiquitous in patent prosecution.
The plaintiffs rely on two cases, decided in 1923 and 1924, which they say established the principle of laches in patent prosecution. These cases did not establish such a principle. In Woodbridge v. United States, 263 U.S. 50, 44 S.Ct. 45, 68 L.Ed. 159 (1923) the applicant waited nine years after the patent had been allowed by the Patent Office and given a statutory one-year delay in issuance, before calling, the non-issuance to the attention of the Patent Office and requesting issuance with changes. The Court held that Woodbridge had waited too long. Indeed so; surely this is not “laches,” for Woodbridge had already lost his statutory right to the patent. And in Webster Electric Co. v. Splitdorf Electrical Co., 264 U.S. 463, 44 S.Ct. 342, 68 L.Ed. 792 (1924) the applicant presented, in a divisional application, claims covering subject matter in an adverse patent, five years after issuance of the adverse patent, with which the applicant had previously lost an interference; a sequence that the Court struck down as “laches.” In Crown Cork & Seal Co. v. Ferdinand Gutmann Co., 304 U.S. 159, 166-68, 58 S.Ct. 842, 82 L.Ed. 1265 (1938) the Court made clear that Webster did not present a general requirement that divisional applications must be filed within two years after the issuance of the parent, or that claims must be presented within two years after issuance of an intervening patent.
Any doubt as to the reach of these cases was resolved in the 1952 Patent Act, which codified the rules for continuing and divisional applications. The codifiers undoubtedly recognized the many purposes served by the various statutory forms of continuing applications, for they chose not to place time limits on their use, beyond those placed by the statute. I take note that when the Patent Office sought to limit the number of continuations to three, the CCPA rejected that position; in In re Henriksen, 55 C.C.P.A. 1384, 399 F.2d 253, 158 USPQ 224 (CCPA 1968), the court discussed the genesis of § 120 and stated that the imposition of new limits on the continuation practice “is for Congress to decide.” Id. at 262, 158 USPQ at 231.
Lemelson is not here charged with violation of § 120 or § 121. Nor is he charged with fraudulent conduct, deception, or other wrongdoing. The only charge is that, despite full compliance with statute and regulation, he took too long to present his *1370claims.1 This case is surely distinguished from Woodbridge, where a one-year delay that was authorized by statute became a nine-year forfeiture by the applicant. And it is surely distinguished from Webster, which was directed to interference practice and led to the one-year time limit for copying claims set in 35 U.S.C. § 135(b).
I have no doubt that compliance with statutory law can lead to inequity in individual cases. However, unless one is prepared to abandon the rule of law in favor of subjective judicial preferences, when there is a statute it must prevail. This court has twice rejected the position now taken, in Bott v. Four Star Corp., 1988 WL 54107 (Fed.Cir. May 26, 1988) and Ricoh Co. v. Nashua Corp., 1999 WL 88969 (Fed. Cir. Feb 18, 1999),2 the court pointing out that the statute authorized the continuation practice here criticized.
In Ricoh the court held that “absent congressional indication that intervening rights are to be applied in the context of continuation applications, we reject Nashua’s argument that we should judicially adopt equitable safeguards, in contravention of established precedent, when Congress itself has declined to do so.” 1999 WL 88969 at *3. In Bott the court observed that “we have not been directed to anything in the legislative history of the 1952 Act that supports Four Star’s contention that the equitable considerations discussed in the Supreme Court cases relied on by Four Star [Webster and Crown Cork] should have continued viability.” 1988 WL 54107 at *1. The court cited In re Hogan, 559 F.2d 595, 604 n. 15, 194 USPQ 527, 536 n. 15 (CCPA 1977) (“It is immaterial under 35 U.S.C. § 120 that the subject matter [of a claim in the continuing application] was not specifically claimed in the [parent] application.”) and In re Henriksen, 399 F.2d at 262, 158 USPQ at 231 (the benefits of § 120 are a matter of entitlement) in refusing to impose time restrictions on continuation practice.
Bott and Ricoh were designated “non-precedential” and this court’s permission to discuss them was granted “reluctantly.” My colleagues on this panel decline to recognize them. While I fully agree that a court is allowed to and indeed must have the right to issue nonpreeedential opinions, at a minimum these two opinions, the Federal Circuit’s only word on the topic, point up the diversity of continuation practices. Other courts that have considered the matter have also declined to intervene into the statutory scheme for continuing applications. See, e.g., Progressive Games Inc. v. Amusements Extra Inc., 51 USPQ2d 1849 (D.Colo.1999); Ford Motor Co. v. Lemelson, 42 USPQ2d 1706 (D.Nev.1997); Advanced Cardiovascular Sys. v. Medtronic Inc., 41 USPQ2d 1770 (N.D.Cal.1996); Price v. Code Alarm Inc., 1992 WL 328808, 26 USPQ2d 1616 (N.D.Ill.1992). All of these decisions reinforce the position that the court should stick with the stat*1371ute, and that any further restraint should be by statutory change.3
The panel majority states that equitable defenses are by statute available in infringement actions. Indeed they are. See 35 U.S.C. § 282. However, the issue here is not the defense of laches to the tort of infringement; it is whether a statutorily authorized action nonetheless can render the patent permanently unenforceable. My concern is with the court’s ruling that an applicant’s full adherence to statutory procedures can nonetheless deprive the applicant, retrospectively, of a property right that was granted in accordance with law. Lest authorized acts of patent prosecution be forever tainted by the potential defense that they should have been done sooner than the statute required, we should adhere to the statute. In United States v. American Bell Tel. Co., 167 U.S. 224, 247, 17 S.Ct. 809, 42 L.Ed. 144 (1897) the Court stated: “No court can disregard any statutory provisions in respect to these matters on the ground that in its judgment they are unwise or prejudicial to the interests of the public.” As the Court explained, an inventor is not “under a sort of moral obligation to see that the public acquires the right to the free use of that invention as soon as is conveniently possible.” Id. at 250, 17 S.Ct. 809.
The district court here correctly held that it “is improper to introduce the equitable doctrine of laches into the statutory scheme of continuation practice.” Symbol, slip op. at 13. The issue now before us has been considered in various legislative proposals and rejected. It is inappropriate for this court, under the guise of equity, to change the law and adopt the position that was rejected by the Congress. Our precedent has acknowledged that “a limit upon continuing applications is a matter of policy for the Congress, not for us.... The law set forth in 35 U.S.C. §§ 112 and 120 is the same for all applications, whether of long or short pendency.” Hogan, 559 F.2d at 604 n. 13, 194 USPQ at 536 n. 13. We should lay to rest this new source of uncertainty and variability in continuation practices, lest we insert a taint into every patent that has invoked these statutory procedures.
. Although the merits of the asserted "prosecution laches” are not before us, we take note of the declaratory plaintiffs' continuing reference to "submarine” patents. The limited record provided to us shows that Lemelson's original patents, filed in 1954 and 1956, issued in 1962 and 1963, and thus expired in 1979 and 1980. The record also shows that ten divisional patents were subject to terminal disclaimers, one of which has a life of only one year and another of four years. The record shows that other patents are continuations-in-part. Both sides outline their positions: the plaintiffs allege that Lemelson has unfairly enlarged the scope of his original patents and is unreasonably threatening suit, while Lemelson answers that his first patents issued long ago and are expired, that any later claims not patentably distinct are subject to attack on the established grounds of invalidity or terminal disclaimer, and that all of his filings complied with the statute.
. These nonpreeedential opinions were permitted to be discussed in this case on Lemel-son's motion.
. The statute has indeed been changed. In connection with the Uruguay round of the General Agreement on Tariffs and Trade the United States agreed to limit the life of all future patents to twenty years from the filing of the earliest application from which priority is claimed. This change was made as an accommodation to international patent harmonization in the context of world trade. However, despite urging by interests including these plaintiffs, the change was not made applicable to existing patents or to pending applications filed before June 8, 1995. The present ruling will achieve the retroactive effect that was legislatively rejected.