SUBMARINE PATENTS SUCHITRA BAI ALTACIT GLOBAL CHENNAI
MEANING OF SUBMARINE PATENTS An informal legal term for a Patent published 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 Like a submarine, it stays under water, i.e. unpublished, for long, then emerges, i.e. is granted and published, and surprises the whole market.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 US patent law, and to a very limited extent since the US 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).
US PATENT PRACTICE In the past, i.e. before US patent applications were automatically published 18 months after their filing or priority date, an applicant for a US patent could delay the grant of the patent by filing a succession of continuation applications. Some submarine patents emerged some 40 years after the date of filing of the corresponding application. All US patent applications are published 18 months after the filing date except for US patent applications for which the applicant explicitly certifies at the filing date that he will not file corresponding patent outside the US (in a recent report though the National Academy of Sciences has recommended that "in all cases, applications should be published during patent examinations"
In the United States, it is possible for a patent applicant to keep the application secret and intentionally delay the progress of the patent examination. The applicant may seek to have the patent granted once a third party separately succeeds in merchandising the same technology and once the market for goods that infringe the patent has expanded enough for the patent holder to obtain a huge amount of royalty on the patent. This is the problem of so-called "submarine patents." In one case, the application for micro computer basic technology was filed in 1969, the existence of the application was not made public for 21 years until the patent was granted in 1990. This patent allow protection for 17 years from the date it is granted. Two factors cause submarine patents. First, the United States does not publish patent applications early. Second, in the United States, the starting date of the patent term is the day the patent is granted, regardless of the filing date.
WHAT IS A CONTINUATION PATENT APPLICATION? Under United States patent practice, a continuation patent application is an application which claims priority from a previously filed application. A continuation application is usually filed when the Patent Office has responded to the parent application with a "final" office action (rejecting the claims in the application), but the applicant wishes to revise the claims again. A continuation application receives the priority date of its parent application. A continuation application is often filed using the file wrapper continuation (FWC) administrative procedure. A related type of patent application is the continuation-in-part (CIP) application.
WHAT IS AN FWC (FILE WRAPPER CONTINUATION) PATENT APPLICATION? "File Wrapper Continuation" is a term specific to the U.S. Patent Office, and is a continuation patent application which claims priority from a previously filed application. It is easier (from the paperwork point of view) to file than other continuations since it is effectively simply a request that the Patent Office reuse an application file already in its possession.
REASONS FOR EMERGENCE OF SUBMARINE PATENTS Submarine patents may also come about accidentally. A company may not realize that a particular patent has value outside its own industry, and only realize the application when the idea in question is already in wide use elsewhere.
FAMOUS SUBMARINE CASE 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. 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