Submarine patent

From Wikipedia, the free encyclopedia

Submarine patent is an informal term for a patent first published and granted long after the original application was filed. Like a submarine, it stays under water, i.e., unpublished, for long periods, then emerges, i.e., granted and published, and surprises the whole market. This practice is generally only possible under the United States patent law, and to a very limited extent since the U.S. signed WTO's TRIPs agreements, making the term of the patent 20 years from the original filing or priority date. Submarine patents are considered by many as a procedural lache (a delay in enforcing one's rights, which may cause the rights to be lost).

1 Legislations
- 1.1 Europe
- 1.2 United States
2 Famous submarine patent owners
3 References
4 See also

[edit] Legislations

[edit] Europe

Under Article 93 EPC, a European patent application shall be published as soon as possible after the expiry of eighteen months after the date of filing or, if priority has been claimed, as from the date of priority. Consequently, the key submarine patent strategy of delaying publication of a patent application for several years is not possible. Nevertheless, if the European patent application has been granted before the expiry of 18 months from the filing or priority date, the application will be published simultaneously with the publication of the European patent.

Also, under Article 123(2) EPC it is not admissible to amend the claims of a European patent application to include subject matter that extends beyond the content of the application as originally filed. In Europe, this requirement is interpreted strictly (to protect third parties' interests ^[1]) to mean that information that is not directly and unambiguously derivable from the application as originally filed may not be added subsequently. This reduces the possibility of a granted patent having significantly different or broader scope than the patent application as published. Claim broadening, in particular, is subject to particularly careful examination under European practice. ^[2]

A further limitation on amending patent applications following publication is that, under Rule 83 EPC, amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Only the claims as originally filed in a European patent application are subject to a search and this rule further reduces the possibility of a European patent having significantly different or broader scope than the patent application as published. An exception to this rule is that new claims may be filed on bringing an international (PCT) application into the European phase (Rule 109 EPC) which may be the subject of a new search.

Divisional applications may be filed under Article 76 EPC at any time while an earlier European patent application is pending (Rule 25(1) EPC). Divisional applications are still published as soon as possible after 18 months from the priority or filing date of the parent application to make the public aware of the contents of the divisional as early as possible.

A divisional application may have claims that are very different from the parent application as originally filed, potentially causing an unexpected monopoly to be claimed. Nevertheless, Article 76(1) EPC requires that a divisional application may only be filed in respect of subject matter which does not extend beyond the content of the parent application as originally filed. This language mirrors Article 123(2) EPC and therefore offers the same protection to third parties that a divisional application may not claim subject matter which was not directly and unambiguously derivable from the parent application as originally filed. In this respect, European law provides no equivalent to the controversional continuation-in-part practice of the USPTO.

Divisional practice in Europe is currently under scrutiny by the Enlarged Board of Appeal. ^[3]

[edit] United States

In the past, when the life of a U.S. patent was 17 years from the date it was granted, submarine patents could issue decades after the initial filing date. Therefore, an applicant for a U.S. patent could benefit by delaying the issuance, and thus expiration date, of a patent through the simple, but relatively costly expedient of filing a succession of continuation applications. Some submarine patents emerged as much as 40 years after the date of filing of the corresponding application. During the extended prosecution period the claims of the patent could be tweaked to more closely match whatever technology or products had become the industry standard.

Currently, the majority of U.S. patent applications are published 18 months after the filing date. However, the applicant can explicitly certify that s/he does not intend to file a corresponding patent outside the U.S. at the time s/he files the patent, and keep the application secret. The applicant can change his/her mind within the first year, but the application is then published. For continuation applications which claim priority to a previously filed application, the publication is six months after the new filing date. The changes to U.S. patent law that introduced publication at 18 months also changed the duration of the patent to 20 years from the filing date of the earliest patent application in any chain of continuation patent applications. As a result there is little benefit in postponing the grant of the patent. The enforceable life of the patent can no longer be shifted into the period when a technology has become more widely adopted, and the patent applicant must give up the chance of foreign patent protection if he is to maintain patent secrecy beyond the 18 month period. In a recent report the National Academy of Sciences has recommended that "in all cases, applications should be published during patent examinations". ^[4]

[edit] Famous submarine patent owners

Jerome H. Lemelson filed a lot of applications that became submarine patents. He and his heirs have collected over 1.3 billion dollars (U.S.) in royalties. Many of these patents, covering machine vision and bar codes, were struck down in January 2004 by the federal district court in Las Vegas, Nevada:

At a minimum, Lemelson's delay in securing the asserted claims amounts to culpable neglect as he ignored the duty to claim his invention properly.... If the defense of prosecution laches does not apply under the totality of circumstances presented here, the Court can envision very few circumstances under which it could.... In sum, Lemelson's delay in securing the asserted patent claims is unexplained and unreasonable.