27/08/2015
‘Submarine patents’ are patents which have not been published before grant. The term ‘submarine’ derives from the fact that they emerge without warning on grant and may be very dangerous to competitors.
The good news is that submarine patents do not exist in the United Kingdom or in Europe. This is because most British and European patent applications are published around 18 months from the date of filing, and normally have a maximum term of 20 years from the date of filing.
However, in the United States, prior to November 2000, patent applications were not published until they were granted. Furthermore, prior to 8 June 1995 (when the TRIPS Agreement came into effect in the United States), the term of a patent was 17 years from the date it was granted.
It is theoretically possible for an applicant to indefinitely delay the grant of a patent filed before 8 June 1995 (and thus indefinitely extend the expiration date of the patent) by filing a series of continuation-in-part applications. Accordingly, it is entirely possible that patent applications filed in the US many decades ago claiming very broad protection in any given field could be still be lurking beneath the depths.
The oldest example issued in the last few years, US 7,898,454, was filed almost 50 years ago – 9 May 1966! This patent will not expire until 2028, no less than 62 years from the date of filing of the US patent application. The assignee of this patent is none other than Her Majesty the Queen and concerns a radar jamming method and apparatus.
This author is not suggesting that Her Majesty is engaged in any form of underhand patent practice by intentionally delaying the grant of her patent. Indeed, very long delays to certain (typically military related) inventions can occur due to secrecy orders preventing the inventor from disclosing the invention and the patent from granting.
Due to the fact that these very old applications are not published until they are granted, until recently it was unknown how many US applications filed before June 1995 are still pending. However, in February 2014 one Gilbert P. Hyatt sued the United States Patent and Trademark Office (USPTO) for “unreasonably delaying” examination of some of his pending applications [Hyatt v USPTO & Lee, United States District Court – Eastern District of Virginia].
A letter from Teresa Rea (see pages 231-244), then Acting Director of the USPTO, to Lamar Smith, co-sponsor of the 2011 America Invents Act, was cited in the Federal Court of Appeal. The letter states that 482 applications that were filed prior to 8 June 1995 were still pending in June 2013. Only 8 of the 482 are subject to a secrecy order. Of the 482 applications, a large majority (399) have just one named inventor, the aforementioned Gilbert P. Hyatt, and have filing dates going back to 1970.
Mr. Hyatt’s applications contain a total of approximately 115,000 claims (an average of approximately 300 claims per application). The subject material of these patents is still unknown (because the applications have not published), but Mr. Hyatt’s granted patents relate to early computer and display technology.
The USPTO stated in its motion to dismiss Mr. Hyatt’s action that “the size, volume and interconnectedness of the 399 applications have created extraordinary challenges for the USPTO in examining his applications”, “almost every one of Mr. Hyatt’s pending applications has one of the largest claim sets that the USPTO has ever encountered in any application … Moreover, Mr. Hyatt’s specifications are hundreds of pages long.”
The courts dismissed Mr. Hyatt’s complaint against the USPTO. Notably, the judgment states that “For example, if Mr. Hyatt were to obtain a patent and sue a third party for infringement, that party may assert that the patent is unenforceable for “prosecution laches, meaning the patentee unreasonably delayed in prosecuting his patent … Any litigation over prosecution laches would necessitate an examination of Mr. Hyatt’s delays, which he has wholly failed to recognize in his complaint.”
Of the 83 applications that were pending in 2013 and not filed by Mr. Hyatt, the proprietor of almost half (39) is Personalized Media Communications.
The remainder of proprietors include UCB Pharma, Centre National de la Recherché Scientifique, Boeing, Calgon Carbon Corporation, U.S. Dept. of Health and Human Services, Sloan-Kettering Institute for Cancer Research, McDonnell Douglas Corporation, U.S. Smokeless Tobacco Company, Sanofi-Aventis Deutschland GmbH and the Bank of America. The content of these applications is, of course, unknown.
Conclusion
It is clear that Mr. Hyatt’s vast portfolio aside, the number of potential “submarine” US patents still out there is somewhat limited. However, presumably most of the remaining cases have been kept active for a reason, and may contain very broad claims that have the potential to impact entire sectors of industry. It may be wise for companies to read the Rea letter mentioned above to check if any of their competitors have pending patents from before 8 June 1995 in the United States.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
