Talk:Submarine patent
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[edit] Latch and lache
Needs explanation of "procedural latch". Leonard G. 22:26, 2 Aug 2004 (UTC)
- Unless there's a US/UK mismatch, I'm sure the term is Lache. Have explained it. Harris 15:34, 16 Oct 2004 (UTC)
[edit] European submarine patents
I've discussed this method with many colleages in the know; can anyone spot a hole in it? Harris 15:34, 16 Oct 2004 (UTC)
- Well, I think you rely a bit too much on the assumption that "the European Patent Office is very unlikely to publish a patent on which the filing [and search] fees have not been paid." Art. 93(1) EPC clearly states: "a European patent application shall be published as soon as possible after the expiry of a period of eighteen months from the date of filing or (...)" [1]. Nowhere in the EPC is it stated that the payment of the filing and search fees is a precondition for the publication to occur. The publication is paramount to protect the interest of third parties and the mere fact that the fees are not paid is not enough to prevent it, by my opinion.
- There is actually another case where the application is published at 18 months even though the filing and search fees have not been paid:
- you file a EP patent application without paying the filing and search fees under Art. 78(2),
- you receive a communication under Rule 85a pointing out the failure to observe the time limit, but you do not paid the fees with the surcharge within one month from this communication,
- you receive a communication under Rule 69(1) noting the loss of right,
- you consider that the finding of the EPO is inaccurate (you pretend that you did pay these fees) and you request a decision under Rule 69(2),
- then the EPO starts considering your request under Rule 69(2) and examines whether or not they share your opinion, but in the meantime, 18 months from the priority date arrives, before the communication under Rule 69(2), second sentence, is issued...
- What happens then? The patent application is published. See "Notice dated 28 August 1990 concerning the publication of European patent applications whose deemed withdrawal has not yet become definitive" (OJ 1990, 455), point 3, second sentence, and also: "In such a case the application must be published, the public being entitled to have European patent applications published as soon as possible after expiry of the 18-month period under Article 93(1) EPC." [2]. I would say the same applies to your scenario, all the more since, in your case, the applicant could be found abusing the procedure (... and do not forget "the parent and divisional applications may not claim the same subject-matter" according to the guidelines [3]. This complicates your scenario...). ... That's just my opinion. --Edcolins 20:51, Oct 16, 2004 (UTC)
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- That's a very good point. I hadn't seen that notice of the President, but I'm unsure how the EPO would apply it to divisional applications; they will be only ever pending for a month and I can't see the office taking action in that time. This is part of the reason I'm trying it! I think the claiming the same material point is a bit of a red herring as the parent will be dead, and in any case T587/98 [4] shows that double patenting isn't actually forbidden under the EPC - the decision includes the fantastic statement that the patent was refused under a non-existent ground of refusal, which would therefore be a susbtantial procedural violation. I think a reference to the decision you cite may be in order. Harris 22:31, 16 Oct 2004 (UTC)
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- T587/98 contradicts the Guidelines indeed (see also [5]). But that's not the most important point here anyway...
- I thought a little bit more about your scenario: Let's imagine at one point you file a divisional application more than 18 months after the priority date, then it "(...) shall be deemed to have been filed on the date of filing of the earlier application (...)" (Art. 76(1)) and as a legal fiction 18 months will have lapsed from the filing date, or in other words the divisional application will then be fictionally more than 18 months old! And since "the technical preparations for publication of the European patent application shall be deemed (also a legal fiction) to have been completed at the end of the day that comes seven weeks before expiry of the eighteenth month following the date of filing" [6], withdrawing the divisional application at that time would not prevent its publication. And the submarine emerges! Are you convinced? --Edcolins 20:07, Oct 18, 2004 (UTC)
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Harris, your idea is actually very original, but maybe just too ahead of its time ;) and it seems to me it does not qualify for wikipedia yet (cf. No original research policy) unless you can cite other sources, articles or discussions about the possibility of obtaining submarine patent under the EPC. I removed your entry. --Edcolins 21:13, Nov 3, 2004 (UTC)
LL Generally speaking, you cannot have a true submarine patent in the EPC because the patent term is calculated from the original filing date. Therefore you use rights if you let your application pend too long. Also, all applications do publish before they can issue, so you cannot have an application suddenly appear and be enforced with never a chance to see it. And finally, there is an opposition period after the patent issues.--Thalia42 06:02, 16 May 2006 (UTC)
[edit] How to submarine
Edcollins, I think you missed the point.
There may be published patents as submarines as well.
- patents that nodody was aware of for a long time, and then are rediscovered and enforced - the market does not read patents in its field - patent recherche fails as it is difficult to assess the targeted market, perhaps because of the wording - patents that were pure "defensive" and later enforced (e.g. switch of ownership, patent strategy), e.g the Unisys patents on jpeg --Anon.
- The expression "submarine patent" originally refers to the practice of misusing the patent system to keep a patent application unpublished as long as possible. Interestingly you extend this definition to encompass all published patents that surprise the industry when they are enforced... I have never heard anyone extending the definition this way, but this is definitely an interesting derivation. Could you cite sources where such a meaning is conferred to the expression? A note in the article explaining this meaning derivation could be added then. Thanks. --Edcolins 09:25, Jan 7, 2005 (UTC)
Prior to 1995, US Patents were generally not published until they issued. Therefore any patent that took a long time to issue was capable of becoming a submarine patent, provided it ultimately did issue into a successful field. The requirement of the 1995 amendment was an attempt to eliminate submarine patents through publication of all patent applications. However, a published patent application could still have the same consequence, if it were overlooked or not taken seriously.
[edit] European submarine patents II, still original research
David, I removed your remark about possible EPC submarine patents. You have provided interesting food for thought, but unfortunately I believe it to be original research. Does any publication such as the epi Information discuss this issue? Cheers. --Edcolins 23:00, 24 November 2006 (UTC)
