Submarine patent
Encyclopedia
A submarine patent is a patent
whose issuance and publication are intentionally delayed by the applicant for a long time, such as several years. This strategy requires a patent system where patent applications are not published. In the United States, patent application
s filed before November 2000 were not published and remained secret until they were granted. Analogous to a submarine
, therefore, submarine patents could stay "under water" for long periods until they "emerged" and surprised the relevant market. Persons or companies making use of submarine patents are sometimes referred to as patent pirates.
The term is occasionally used more generally for any patent used in patent ambush
.
Submarine patent practice was possible previously under the United States patent law
, but is no longer practical since the U.S.
signed the TRIPS
agreement of the WTO
: since 1995, patent terms (20 years in the U.S.) are measured from the original filing or priority
date, and not the date of issuance. A few potential submarine patents may result from pre-1995 filings that have yet to be granted and may remain unpublished until issuance. Submarine patents are considered by some, including the US Federal Courts, as a procedural laches
(a delay in enforcing one's rights, which may cause the rights to be lost).
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 application
s. 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 within 18 months after the filing date. However, the applicant can explicitly certify that they do not intend to file a corresponding patent outside the U.S. at the time they file the patent, and keep the application secret. The applicant can change their 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".
filed many applications that became submarine patents. He and his heirs have collected over 1.3 billion dollars (U.S.) in royalties
. However, in 2004 Lemelson's estate was defeated in a notable court case involving Symbol Technologies
and Cognex Corporation
, which sought (and received) a ruling that 76 claims under Lemelson's machine vision patents were unenforceable. The plaintiff companies, with the support of dozens of industry supporters, spent millions on this landmark case. The ruling was upheld on September 9, 2005 by a three judge panel of the U.S. Court of Appeals for the Federal Circuit
under the doctrine of laches, citing "unreasonably long … delays in prosecution." Lemelson's estate appealed for a review by the full circuit en banc
. On November 16, 2005, the full court declined to review the case, but, citing "prejudice to the public as a whole," extended the original unenforceability ruling to all claims under the patents in question.
The patents at issue are: , , , , , , , , , , , , , .
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
whose issuance and publication are intentionally delayed by the applicant for a long time, such as several years. This strategy requires a patent system where patent applications are not published. In the United States, patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
s filed before November 2000 were not published and remained secret until they were granted. Analogous to a submarine
Submarine
A submarine is a watercraft capable of independent operation below the surface of the water. It differs from a submersible, which has more limited underwater capability...
, therefore, submarine patents could stay "under water" for long periods until they "emerged" and surprised the relevant market. Persons or companies making use of submarine patents are sometimes referred to as patent pirates.
The term is occasionally used more generally for any patent used in patent ambush
Patent ambush
A patent ambush occurs when a member of a standard-setting organization withholds information, during participation in development and setting a standard, about a patent that the member or the member's company owns, has pending, or intends to file, which is relevant to the standard, and...
.
Causes
| "Prior to requiring the publication of [U.S. patent] applications, the public would not learn of a patent until after it issued, which is often several years after the application was filed. Some patentees took advantage of this practice to the extreme (with ‘‘submarine’’ patents), and intentionally delayed their patents issuance, and thus publication, of the patent for several years to allow potentially infringing industries to develop and expand, having no way to learn of the pending application." |
| —U.S. Committee on the Judiciary, 2008 |
Submarine patent practice was possible previously under the United States patent law
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, but is no longer practical since the U.S.
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
signed the TRIPS
Agreement on Trade-Related Aspects of Intellectual Property Rights
The Agreement on Trade Related Aspects of Intellectual Property Rights is an international agreement administered by the World Trade Organization that sets down minimum standards for many forms of intellectual property regulation as applied to nationals of other WTO Members...
agreement of the WTO
World Trade Organization
The World Trade Organization is an organization that intends to supervise and liberalize international trade. The organization officially commenced on January 1, 1995 under the Marrakech Agreement, replacing the General Agreement on Tariffs and Trade , which commenced in 1948...
: since 1995, patent terms (20 years in the U.S.) are measured from the original filing or priority
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
date, and not the date of issuance. A few potential submarine patents may result from pre-1995 filings that have yet to be granted and may remain unpublished until issuance. Submarine patents are considered by some, including the US Federal Courts, as a procedural laches
Laches (equity)
Laches is an "unreasonable delay pursuing a right or claim...in a way that prejudices the [opposing] party" When asserted in litigation, it is an equitable defense, or doctrine...
(a delay in enforcing one's rights, which may cause the rights to be lost).
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 application
Continuing patent application
Under United States patent law, a continuing patent application is a patent application which follows, and claims priority to, an earlier filed patent application....
s. 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
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
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 within 18 months after the filing date. However, the applicant can explicitly certify that they do not intend to file a corresponding patent outside the U.S. at the time they file the patent, and keep the application secret. The applicant can change their 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
United States National Academy of Sciences
The National Academy of Sciences is a corporation in the United States whose members serve pro bono as "advisers to the nation on science, engineering, and medicine." As a national academy, new members of the organization are elected annually by current members, based on their distinguished and...
has recommended that "in all cases, applications should be published during patent examinations".
Famous submarine patent owners
Jerome H. LemelsonJerome H. Lemelson
Jerome "Jerry" Hal Lemelson was a prolific American engineer, inventor, and patent holder...
filed many applications that became submarine patents. He and his heirs have collected over 1.3 billion dollars (U.S.) in royalties
Royalties
Royalties are usage-based payments made by one party to another for the right to ongoing use of an asset, sometimes an intellectual property...
. However, in 2004 Lemelson's estate was defeated in a notable court case involving Symbol Technologies
Symbol Technologies
Symbol Technologies is a manufacturer and worldwide supplier of mobile data capture and delivery equipment. The company specializes in barcode scanners, mobile computers, RFID systems and Wireless LAN infrastructure. Symbol Technologies is a wholly owned subsidiary of Motorola, and headquartered in...
and Cognex Corporation
Cognex Corporation
Cognex Corporation is a manufacturer of machine vision systems, software and sensors used in automated manufacturing to inspect and identify parts, detect defects, verify product assembly, and guide assembly robots. Cognex is headquartered in Natick, Massachusetts, USA...
, which sought (and received) a ruling that 76 claims under Lemelson's machine vision patents were unenforceable. The plaintiff companies, with the support of dozens of industry supporters, spent millions on this landmark case. The ruling was upheld on September 9, 2005 by a three judge panel of the U.S. Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
under the doctrine of laches, citing "unreasonably long … delays in prosecution." Lemelson's estate appealed for a review by the full circuit en banc
En banc
En banc, in banc, in banco or in bank is a French term used to refer to the hearing of a legal case where all judges of a court will hear the case , rather than a panel of them. It is often used for unusually complex cases or cases considered to be of greater importance...
. On November 16, 2005, the full court declined to review the case, but, citing "prejudice to the public as a whole," extended the original unenforceability ruling to all claims under the patents in question.
The patents at issue are: , , , , , , , , , , , , , .
See also
- After claimingAfter claimingAfter claiming is the practice of filing a US patent application after the publication by a third party of a description of the same invention...
- EvergreeningEvergreeningEvergreening refers to a variety of legal and business strategies by which technology producers with patents over products that are about to expire, retain rent from them by either taking out new patents or by buying out or frustrating competitors, for longer periods of time than would normally be...
- Patent misusePatent misuseIn United States patent law, patent misuse is an affirmative defense used in patent litigation when a defendant has been accused to have infringed a patent. It has also been used to mitigate damages following a finding of infringement or justify a failure to pay contracted-for royalties...
- Patent trollPatent trollPatent troll is a pejorative but questioned term used for a person or company who is a non-practicing inventor, and buys and enforces patents against one or more alleged infringers in a manner considered by the target or observers as unduly aggressive or opportunistic, often with no intention to...
- Term of patent in the United StatesTerm of patent in the United StatesIn the United States, under current patent law, the term of patent, provided that maintenance fees are paid on time, are:* For applications filed on or after June 8, 1995, the patent term is 20 years from the filing date of the earliest U.S...