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Wealth of Ideas, February 2006
In last October’s
feature article, we briefly described some of the
proposed changes to the patent system contained in H.R.
2795, or "the Patent Reform Act of 2005".
One such proposed change would allow the Director of
the USPTO to place limits on the scope of continuation
applications in order to deal with the problem of "submarine
patents." This month we'll discuss continuation
applications and submarine patents.
A continuation application has the same filing date
as an earlier patent application, and also shares the
same specification and at least one of the same inventors
as the earlier application. The new application may
feature additional claims, as long as they are supported
by the original specifications.
Why does the current system need to change, in the
eyes of Congress? Most likely, it’s because continuation
applications allow for the possibility of so-called
“submarine patents”. A submarine patent is
one which is kept from issuing for a long time as the
inventor files a succession of continuation applications
based on the original application and with new claims
developed from the inventor’s knowledge of current
technology in the patent’s field. Then, when the
patent finally issues, it has ready-made “infringers."
One name in intellectual property that has become inextricably
linked with submarine patents is Jerome Lemelson, who
was one of the most prolific, and controversial, individual
inventors in U.S. history. To his credit, Lemelson had
over 500 patents to his name and was known as a generous
philanthropist.
However, Lemelson and the foundation that bear his
name are also known for their practice of keeping patent
applications from the 1950s pending through continuation
applications until the patents finally issued between
1970 and 1994; changing these patent applications substantially
to keep up with current technology; and enforcing the
resulting “submarine patents” through widespread
litigation.
Patent law has since changed, and now that a patent's
20-year term begins on the filing date, the problem
of submarine patents has been much reduced. There are
three measures already in place to prevent the abuse
of continuation applications:
For one, whereas patents were formerly valid for 17
years from the date of issuance, now they are valid
for 20 years from the date of filing.
Second, patent applications are published 18 months
from the filing date, unless the inventor waives his
right to file a foreign application. Having patent applications
publicly available also makes them less likely to surprise
unwitting infringers later on.
Third, the Court of Appeals for the Federal Circuit
ruled against the Lemelson estate in 2005 based on the
doctrine of laches, due to the patents' "pattern
of unjustifiably delayed prosecution".
These three reforms have nearly eliminated submarine
patents as a significant threat to any given industry.
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