A submarine patent is a patent whose issuance and publication are intentionally delayed by the applicant for a long time, such as several years.123 This strategy requires a patent system where, first, patent applications are not published, and, second, patent term is measured from grant date, not from priority/filing date. In the United States, patent applications 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.45
|"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, 20081|
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 A few potential submarine patents may result from pre-1995 filings that have yet to be granted and may remain unpublished until issuance.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 applications.clarification needed Some submarine patents emerged as much as 40 years after the date of filing of the corresponding application.10 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 2006 report the National Academy of Sciences has recommended that "in all cases, applications should be published during patent examinations".11
Jerome H. Lemelson filed many applications that became submarine patents.12 He and his heirs have collected over 1.3 billion dollars (U.S.) in royalties.13 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.13 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."1415 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.16
The patents at issue are: U.S. Patent 4,338,626, U.S. Patent 4,511,918, U.S. Patent 4,969,038, U.S. Patent 4,979,029, U.S. Patent 4,984,073, U.S. Patent 5,023,714, U.S. Patent 5,067,012, U.S. Patent 5,119,190, U.S. Patent 5,119,205, U.S. Patent 5,128,753, U.S. Patent 5,144,421, U.S. Patent 5,249,045, U.S. Patent 5,283,641, U.S. Patent 5,351,078.
- U.S. Committee on the Judiciary, Calendar No. 563, 110th Congress Report, 2d Session, U.S Senate, 110–259, The Patent Reform Act of 2007, January 24, 2008, footnote 112.
- Gabriel P. Katona, The Myth of Submarine Patents, Pandab online newsletter, August 10, 1998. Consulted on March 28, 2010.
- Gene Quinn, Submarine Patents Alive and Well: Tivo Patents DVR Scheduling, IPWatchdog, February 19, 2010. Consulted on March 28, 2010.
- United States House of Representatives Committee on the Judiciary, Subcommittee on Courts and Intellectual Property, Hon. Howard Coble, North Carolina, Chairman, Hearing on the "21st Century Patent System Improvement Act", H.R. 400, Summary of Testimony of Harold C. Wegner, Professor of Law, George Washington University Law School, retrieved on June 10, 2006
- Janine Robben, Son of Invention, Willamette Week Online, August 25, 2004
- Josh Rosenblum, Paying for Patents, Legal Affairs, May/June 2005. Consulted on March 28, 2010.
- dead link
- Ozer, Jan (2010-03-04). "Ogg, MPEG LA, and Submarine Patents". Streaming Media Magazine. Retrieved 2011-07-26.
- Paul, Ryan (2009-07-05). "Decoding the HTML 5 video codec debate". Ars Technica. Retrieved 2011-07-26.
- "Of course, there are a few original patent applications that take decades to issue as well, but this is due to secrecy restrictions, interferences, Board, district court or Federal Circuit appeals. See, e.g., U.S. Patent No. 5,132,080 (an original application was filed November 28, 1944 and the patent was not permitted to issue until July 21, 1992 due to secrecy restrictions); U.S. Patent No. 6,097,812 (filed July 25, 1933 and delayed due to secrecy until August 1, 2000); U.S. Patent No. 6,130,946 (filed October 23, 1936 and delayed due to secrecy until October 10, 2000). Pursuant to 35 U.S.C. §181, the Commissioner of the PTO must withhold the granting of any patent “[w]henever publication or disclosure ... by the grant of a patent on an invention in which the Government has a property interest might, in the opinion of the head of the interested Government agency, be detrimental to the national security.” Id. Although §181 only permits the Commissioner to delay patent issuance for up to one year, the secrecy can be renewed for an unlimited number of one year periods if it is in the interest of national security." in Mark A. Lemley, Kimberly A. Moore, Ending Abuse of Patent Continuations, Boalt Working Papers in Public Law (University of California, Berkeley), Year 2003, Paper 20, page 9, footnote 27.
- The National Academies, "Changes Needed to Improve Operation of U.S. Patent System". Archived from the original on February 17, 2006. Retrieved February 17, 2006.
- W. F. Heinze, Dead Patents Walking, IEEE Spectrum (2002). Consulted on November 26, 2009.
- Susan Hansen, Breaking the (Bar) Code, IP Law & Business, March 2004
- United States Court of Appeals for the Federal Circuit, 04-1451, Symbol Technologies, Inc. et al. v. Lemelson Medical, Education & Research Foundation, LP, September 9, 2005
- Appeals Court confirms invalidity of bar code patents, OUT-LAW News, September 12, 2005
- United States Court of Appeals for the Federal Circuit, 04-1451, Symbol Technologies, Inc. et al. v. Lemelson Medical, Education & Research Foundation, LP, November 16, 2005
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