Saturday, July 4, 2009

Submarine Patents- history,myth and facts

This is an interesting type of patents which i came across while doing my initial search on software patents.

The Definition:

Many definitions have followed regarding the non existing term "Submarine Patents"

  • A SubmarinePatent is a patent which an "inventor" files on a device or technology that doesn't exist yet, or which has not yet been successfully implemented. Using various procedural mechanisms, the filer intentionally delays issue of the patent, sometimes for years, until a practical implementation of the device/technology appears on the market. At that time, the filer allows the patent to "come to the surface" and demands royalties from the party who did the real work.
  • Submarine patent is an informal term for a patent first published and granted long after the initial application was filed. In analogy to a submarine, its presence is unknown to the public; it stays under water, i.e., unpublished, for long periods, then emerges, i.e., granted and published, and surprises the relevant market


Submarine patents are not related to patenting of sumarine its a different catchphrase “submarine patent” cropped up for the first time during the propaganda campaign to make the 20 year patent term proposal palatable. When the Democratic Administration was anxious to obtain the vote of the newly elected Republican Senate majority for the GATT Uruguay Round Implementation Act, Mr. Kantor, the U.S

Trade Representative wrote a letter to Senator Dole, and another letter to the Senate, generally repudiating the deal with the Japanese for the 20 year patent term, and promised the cooperation of the Administration if Congress would desire to amend the patent term provisions of the Uruguay Round Implementation Act to provide for a minimum patent term. In his letter Mr. Kantor defined the phrase “submarine patents” as patents that issue after a long pendency artificially maintained by the applicant, and are then used to hold to ransom industries that have matured on the basis of that technology during such prolonged application pendency. The Trade Representative then conceded that the fixed patent term of 20 years would be useless to eliminate such “submarine patents.”

For example, under the old system, someone in 1950 could have filed a patent on, say, a packet-based computer network router, though there were as yet hardly any computers to speak of. By requesting repeated "continuations" during the patent application process, the filer could force the patent to be delayed indefinitely until packet-based routers started to come onto the market, say in 1970. The filer then stops requesting continuations, the patent issues, and the patent-seeker can collect royalties on network routers for 17 years from that point, until 1987.

One the patents that is best known for its long pendency, is US patent No. 4,621,410 to Williamson. It involves important technology that is widely used throughout the world. The Williams patent issued after a two-way division requirement, an appeal, and a prolonged interference with others who claimed to have made the same invention. In the case of this invention 12 of the total of 15 years pendency was spent merely waiting for the Patent Office to act. The applicant requested less than a total of a year of time extensions, i.e. less than 7% of total application pendency. The pendency of this application was not prolonged by the inventor, but rather by the slow examination in the Patent Office.

Another patent often referred to by the “submarine patent” myth- makers, is US patent No. 5,283,641 of Jerome Lemelson, a modern day Thomas Edison, whose fertile imagination created many new industries and who invented many products used in today’s advanced technology. That famous Lemelson patent issued after a 42 year pendency by which time Mr. Lemelson was a multimillionaire in his 70s, and after he gave away much of his money for charitable causes. These attributes of Mr. Lemelson were mentioned merely to demonstrate that he was not exactly wanting for the kind of wealth that so called “submarine patentees” were rumored to extort from the “innocent infringers” of their delayed patent.

In taking a closer look of that Lemelson patent that issued in the early 90’s, more than 40 years after its initial filing, it should be first noted that the patent was the last of an unprecedented 20-way division requirement imposed on the original application by the Patent Office. The application related to the critical pioneering new invention of the concept that became known as “machine vision.” The invention involved such a monumentally significant new concept, that it had to be divided into as unprecedentedly many as 20 separate new patent applications.

Jerome H. Lemelson filed many applications that became submarine patents.  He and his heirs have collected over 1.3 billion dollars (U.S.) in royalties.Many of these patent claims, covering machine vision and bar codes, but 76 claims of his 14 patents were struck down in January 2004 by the federal district court in Las Vegas, Nevada.

Facts and present status of Submarine patents:


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.

Also, 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 ) 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

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 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"

Note: The contents for this post has been taken from various sources and hence i am not responsible for the authenticity of the contents

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