Submarine patent
From Free net 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 Like a submarine, it stays under water, i.e. unpublished, for long, then emerges, i.e. is granted and published, and surprises the whole market.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 compulsory the publication of patent applications 18 months after their 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).
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United States
In the past, when the life of a U.S. patent was measured from its date of grant, an applicant for a U.S. patent could benefit by delaying the issuance and expiration dates 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, U.S. patent applications are published 18 months after the filing date except for U.S. patent applications for which the applicant explicitly certifies at the filing date that he does not intend to file a corresponding patent outside the U.S. The applicant can later change his mind, but the application is then published. 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" [1].
Europe
Under the European Patent Convention (EPC), the submarine patent strategy is in theory and in practice, until otherwise proven, impossible to carry out, as far as delaying the publication of the disclosure is concerned. The scope of protection can however be amended before grant so as to extend the protection conferred within the limit of the original disclosure.
Pursuant to Art. 93 EPC[2], "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". As soon as the 18 month period elapsed, provided that the patent application has not been refused, withdrawn or deemed to be withdrawn, the publication is unconditional.
In addition, European patent applications and European patents cannot validly be amended after filing by adding subject-matter not disclosed on filing. Art. 123(2) EPC[3] provides that "a European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed." This is intended to protect third parties' interests in that subject-matter cannot be added in a patent application while at the same keeping the original date of filing. The disclosure must be complete as of the date of filing.
However, publication of a patent application in Europe, the U.S., or elsewhere in the world (e.g. through the Patent Cooperation Treaty) does not necessarily effectively disclose the scope of protection conferred by the patent or its likely effect on an industry. That is because patent claims can be extensively changed during patent prosecution, even after publication, but always within the limit of the original disclosure (Art. 123 EPC[4]). It is also possible to file divisional applications with claims of varying scope that later issue with some resulting surprise to an industry.
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."