The Myth of Submarine Patents

As far as one can tell, the 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.”

Since that time the more strident proponents of the 20 year patent term, representing the large, multinational company point of view, have latched on to the “submarine patent” slogan, and repeated it like a mantra in advocating the point of view of the Japanese and their large industrial allies in the US. Such a catchy phrase has caught on with many people who do not know much about patents.

There is only one problem with the term “submarine patents.” Nobody could find one; they just don’t seem to exist. It was just a figment of a propagandist’s overactive imagination. Surely, there have been a number of patents that had unusually long pendencies. In fact, at the time of the enactment of the GATT legislation, 620 patent applications have been pending in the Patent and Trademark Office for over 20 years. About 600 of these have been under a secrecy order by some government department, as involving subject matter critical to the national security. The about 2 dozen other long-pending patent applications represent such an infinitesimally small percentage of all pending applications, that there would not be enough space within one line for the leading zeros preceding the first significant number after the decimal point.

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.

Before the new 20-year patent term legislation forced applicants hastily to file their divisional applications, it was common practice to file a divisional patent application for any separate invention only after the original patent application was prosecuted to allowance. This was necessary to learn how the Patent Office will deal with the patentability of the original, the so called “parent” application, and then conduct the prosecution of the various divisionals accordingly. The long pendency was not exactly “secret” during their long pendency, and the last patent did not come out from the Patent Office like a submarine, because its contents were already disclosed to the public by the issuance of the first patent in this series in 1963, or 31 years before the last patent claims have issued.

What else happened during the 42 year pendency of that application? One allegation of the promoters of the myth of “submarine patents”, asserts that applicants prolong the pendency of their patent applications by seeking endless time extensions, and frequent refilings of the application. A review of the file history of the patent shows that during the 504 month pendency, the applicant obtained merely a total of 30 month of time extensions. Those time extensions amounts to less than 6% of the total pendency of the application, that is much less than the time extension percentage routinely sought by large companies before the recent change of the law.

As far as the frequent refilings are concerned, the filing of all of these divisionals was not sought by the applicant, but was imposed upon him by the Patent Office.

Due to the complexity and the pioneering nature of the invention, the Patent Office involved the application in protracted examination, whereby 29 years of the total pendency of the application was spent merely on waiting for the Patent Office to take some action. There was also a need for three appeals that involve a great deal of waiting for Patent Office tribunals to act, before the examiner was finally reversed in each application and a patent has issued.

This last of the divisional patents covered only a small segment of the overall technological innovation represented by the initially filed patent application. Most of the other patents in this series have issued long ago and have expired by now.

Mr. Lemelson was a young man when he initially filed the original patent application on his invention. During the next 40 or so years, industry was free to use his invention which, in the absence of a patent, did not pay anything to its inventor. It was only the unrewarded and uncompensated inventor who had to bear the monumental costs of prosecuting his patent application through all of its stages and reincarnations. It was only due to the unusual technological advance of the invention that it has not become obsolete during the long patent pendency, but started to pay off in late 1992 by the time the inventor was in his 70s, and was a multimillionaire as a result of other inventions. The irony is that under the current 20 year patent term which does not provide for a minimum patent term, the inventors of such pioneering new inventions as that Lemelson technology would have not obtained any patents at all, because the term would have run out 20 years after the initial filing of the patent application, without there having remained any time for a patent to issue.

The new 20-year patent term represents a disincentive to serious inventors and it should be legislatively altered to provide a minimum patent term for inventors, such as is sough under Rep. Dana Rohrabacher’s Bill H.R. 359.

by Gabriel P. Katona