Talk:Submarine patent

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Latch and lache

Needs explanation of "procedural latch". Leonard G. 22:26, 2 Aug 2004 (UTC)

Unless there's a US/UK mismatch, I'm sure the term is Lache. Have explained it. Harris 15:34, 16 Oct 2004 (UTC)

European submarine patents

I've discussed this method with many colleages in the know; can anyone spot a hole in it? Harris 15:34, 16 Oct 2004 (UTC)

Well, I think you rely a bit too much on the assumption that "the European Patent Office is very unlikely to publish a patent on which the filing [and search] fees have not been paid." Art. 93(1) EPC clearly states: "a European patent application shall be published as soon as possible after the expiry of a period of eighteen months from the date of filing or (...)" [1]. Nowhere in the EPC is it stated that the payment of the filing and search fees is a precondition for the publication to occur. The publication is paramount to protect the interest of third parties and the mere fact that the fees are not paid is not enough to prevent it, by my opinion.

There is actually another case where the application is published at 18 months even though the filing and search fees have not been paid:

• you file a EP patent application without paying the filing and search fees under Art. 78(2),
• you receive a communication under Rule 85a pointing out the failure to observe the time limit, but you do not paid the fees with the surcharge within one month from this communication,
• you receive a communication under Rule 69(1) noting the loss of right,
• you consider that the finding of the EPO is inaccurate (you pretend that you did pay these fees) and you request a decision under Rule 69(2),
• then the EPO starts considering your request under Rule 69(2) and examines whether or not they share your opinion, but in the meantime, 18 months from the priority date arrives, before the communication under Rule 69(2), second sentence, is issued...

What happens then? The patent application is published. See "Notice dated 28 August 1990 concerning the publication of European patent applications whose deemed withdrawal has not yet become definitive" (OJ 1990, 455), point 3, second sentence, and also: "In such a case the application must be published, the public being entitled to have European patent applications published as soon as possible after expiry of the 18-month period under Article 93(1) EPC." [2]. I would say the same applies to your scenario, all the more since, in your case, the applicant could be found abusing the procedure (... and do not forget "the parent and divisional applications may not claim the same subject-matter" according to the guidelines [3]. This complicates your scenario...). ... That's just my opinion. --Edcolins 20:51, Oct 16, 2004 (UTC)

That's a very good point. I hadn't seen that notice of the President, but I'm unsure how the EPO would apply it to divisional applications; they will be only ever pending for a month and I can't see the office taking action in that time. This is part of the reason I'm trying it! I think the claiming the same material point is a bit of a red herring as the parent will be dead, and in any case T587/98 [4] shows that double patenting isn't actually forbidden under the EPC - the decision includes the fantastic statement that the patent was refused under a non-existent ground of refusal, which would therefore be a susbtantial procedural violation. I think a reference to the decision you cite may be in order. Harris 22:31, 16 Oct 2004 (UTC)

T587/98 contradicts the Guidelines indeed (see also [5]). But that's not the most important point here anyway...

I thought a little bit more about your scenario: Let's imagine at one point you file a divisional application more than 18 months after the priority date, then it "(...) shall be deemed to have been filed on the date of filing of the earlier application (...)" (Art. 76(1)) and as a legal fiction 18 months will have lapsed from the filing date, or in other words the divisional application will then be fictionally more than 18 months old! And since "the technical preparations for publication of the European patent application shall be deemed (also a legal fiction) to have been completed at the end of the day that comes seven weeks before expiry of the eighteenth month following the date of filing" [6], withdrawing the divisional application at that time would not prevent its publication. And the submarine emerges! Are you convinced? --Edcolins 20:07, Oct 18, 2004 (UTC)

Harris, your idea is actually very original, but maybe just too ahead of its time ;) and it seems to me it does not qualify for wikipedia yet (cf. No original research policy) unless you can cite other sources, articles or discussions about the possibility of obtaining submarine patent under the EPC. I removed your entry. --Edcolins 21:13, Nov 3, 2004 (UTC)

LL Generally speaking, you cannot have a true submarine patent in the EPC because the patent term is calculated from the original filing date. Therefore you use rights if you let your application pend too long. Also, all applications do publish before they can issue, so you cannot have an application suddenly appear and be enforced with never a chance to see it. And finally, there is an opposition period after the patent issues.--Thalia42 06:02, 16 May 2006 (UTC)

How to submarine

Edcollins, I think you missed the point.

There may be published patents as submarines as well.

- patents that nodody was aware of for a long time, and then are rediscovered and enforced - the market does not read patents in its field - patent recherche fails as it is difficult to assess the targeted market, perhaps because of the wording - patents that were pure "defensive" and later enforced (e.g. switch of ownership, patent strategy), e.g the Unisys patents on jpeg --Anon.

The expression "submarine patent" originally refers to the practice of misusing the patent system to keep a patent application unpublished as long as possible. Interestingly you extend this definition to encompass all published patents that surprise the industry when they are enforced... I have never heard anyone extending the definition this way, but this is definitely an interesting derivation. Could you cite sources where such a meaning is conferred to the expression? A note in the article explaining this meaning derivation could be added then. Thanks. --Edcolins 09:25, Jan 7, 2005 (UTC)

Here is a page that mentions the extended definition (though it is probably not the most reliable source in the world): [7]--C960657 (talk) 22:29, 11 December 2007 (UTC)

Indeed, not the most reliable source out there, it seems.. --Edcolins (talk) 20:11, 13 December 2007 (UTC)

Prior to 1995, US Patents were generally not published until they issued. Therefore any patent that took a long time to issue was capable of becoming a submarine patent, provided it ultimately did issue into a successful field. The requirement of the 1995 amendment was an attempt to eliminate submarine patents through publication of all patent applications. However, a published patent application could still have the same consequence, if it were overlooked or not taken seriously.

European submarine patents II, still original research

David, I removed your remark about possible EPC submarine patents. You have provided interesting food for thought, but unfortunately I believe it to be original research. Does any publication such as the epi Information discuss this issue? Cheers. --Edcolins 23:00, 24 November 2006 (UTC)

Wasn't me this time! I was quite surprised to see someone put it in... Nothing verifiable as yet. --Harris 07:29, 27 November 2006 (UTC)

That's fame then.. --Edcolins 21:13, 27 November 2006 (UTC)

WW II crypto patents

I removed "Extreme examples of U.S. submarine patents include US 6097812 , filed on July 25, 1933 and granted (and published) 67 years and seven days afterwards on August 1, 2000, and US 6130946 , filed on October 23, 1936 and granted on October 10, 2000." The patents describe the rotor cipher machines that the U.S. used in WW II. These patents were delayed for national security reasons and I can't see where they have any commercial significance. No one would be interested in this technology today. They are not examples of submarine patents.--agr (talk)

Thanks. Indeed. I have added a note with a reference explaining this. --Edcolins (talk) 20:22, 29 February 2008 (UTC)

Incomplete Sentence

In the bottom section of the article: "Many of these patent claims, covering machine vision and bar codes, but 76 claims of his 14 patents were struck down in January 2004 by the federal district court in Las Vegas, Nevada:"

If I knew what the author was trying to say, I'd fix it myself...74.92.147.125 (talk) 19:07, 10 February 2009 (UTC)

Indeed... thanks for your note. I have tagged the sentence with "{{Clarifyme}}" for now. --Edcolins (talk) 21:01, 10 February 2009 (UTC)

Granted, unseen submarine patents

I'm surprised by this article's definition of submarine patents. I've always used the definiton used by Bruce Perens: http://perens.com/Articles/PatentFarming.html

I.e. patents that are out there, published but not making themselves known, until a profitable company starts using the idea (thinking it was not patented) or until a lot of people are invested in using the idea, and then it surfaces/attacks.

Secondly, the intro focusses disproportionately on the situation in the USA pre-1995. At first reading, I thought it was saying that problem was USA-only and is now solved. The article body gives a very different, more accurate picture. Gronky (talk) 17:05, 25 March 2010 (UTC)

I have never seen the phrase used in the way you describe and, as far as I'm concerned, the lead of the article is correct. They are essentially only a problem in the US, and then only to a limited extent now that most applications are published after 18 months. The body of the article, discussing European law, is essentially one big bit of original reasearch (by synthesis) suggesting how EP practice MIGHT result in something approximating a submarine patent. I don't think any of the sources cited against the EP section mention the phrase "submarine patent", but I'd be interested if you can find one.

Perhaps the term is taking on a different meanings now that there is nothing current to apply it to, but I cannot see that the Perens article is a reliable source on which improvements to this article can be based. GDallimore (Talk) 17:21, 25 March 2010 (UTC)

My experience with patents is all post-2000, so I don't know if the usage I mention existed in pre-1995 or not, but I've added four refs for current use of the term as I described: the Perens article, reprinted in a book on the topic, the moneyterms.co.uk definition, and the term being used for the enforcement of a patent which the patent holder hadn't "publicized". Gronky (talk) 03:33, 26 March 2010 (UTC)

I've now changed it to say that your meaning *was* the primary or exclusive meaning in the 20th century, and that the broader meaning is a 21st century thing. How's that? Gronky (talk) 04:05, 26 March 2010 (UTC)

I agree with GDallimore that the Perens article does not seem to be a reliable source. This looks like a self-published piece. The proposed new meaning is not (yet) established in my opinion. --Edcolins (talk) 18:32, 25 March 2010 (UTC)

Perens' article was published in this book: http://www.intertic.org/Books/Software%20Patents.html

Gronky (talk) 02:58, 26 March 2010 (UTC)

Some of those sources look like they SHOULD be reliable. However, the statements that the GIF patent is an example of a submarine are frankly ridiculous. I've researched that patent thoroughly and it was extremely well known and was being licensed to hundreds of corporations before Compuserve copied it. The only way it which is was a submarine patent was because Unisys were a hardware manufacturer and were licensing it to hardware corporations. Compuserve were the first person to implement the algorithm in software, an area where Unisys had little interest.

Seems to me that "submarine patent" is being abused in a similar way as "patent troll": to refer to any patent/patent holder the writer in question doesn't like without actually studying the facts. Unisys weren't a patent troll, either, by the way. As discussed above, they were always open about the existence of their patent, never lurking under bridges. GDallimore (Talk) 09:15, 26 March 2010 (UTC)

Found some excellent sources confirming the original meaning of the term: [8] [9] [10] [11] [12] [13]. The last one in particular suggests an origin for the term and I'll add it to the article at some point.

Reading some stuff, I think I know how the other meaning of submarine patent might have come about: it's a very common error to forget that there is a period of time between filing of an application and granting/publication of a patent. ie people forget that the filing date is not the patent date. Because of that, people might not understand that submarine patents in the traditional sense of hiding completely secretly at the patent office are even possible, so authors writing about them try to create an interpretation that makes sense to them.

It isn't an interpretation that makes sense to me: there's nothing secret about these new, so-called submarine patents - it's only that the person who finds themselves on the end of the suit claims they were unaware of the patent. There's no "surfacing", just suddenly seeing something that was in plain sight all along. And anyone at the end of an infringement suit has to say they were unaware of the patent or they're facing greater damages. Knowing infringment can make you liable for triple damages in the US, I believe. In the UK, if you were unaware of the patent you may not have to pay damages at all so this new type of submarine patent is hardly a sinister destructive beast, is it? —Preceding unsigned comment added by GDallimore (talk • contribs)

Right. Made some pretty significant edits. Have removed the entire Europe section since there was nothing in it and was nothing in any of the sources about submarine patents. "Long pendency" (mentioned in some G decisions about divisionals) and "submarine" are definitely not the same thing. I then restored this old simple definition of submarine patent but, based on Gronky's suggestion that a patent ambush was a related term, created a new section highlighting Peren's alternative definition. GDallimore (Talk) 12:34, 26 March 2010 (UTC)

It's not "Peren's alternative definition", it's a common modern use of the term. If you want to limit this article to the original meaning (which would be perfectly valid - I don't mean to imply anything negative with the word "limit"), then it can be explained in one line in the intro. Telling people the scope of the article at the very end isn't good for readabililty, IMO. Gronky (talk) 17:46, 26 March 2010 (UTC)

It is not a "common use". I'd say it's far from common from what I've seen in sources and a minority view. The lead should summarise the main points in an article and this alternative usage of the term is not a main point in the article, but a sideline at the end. The lead now summarises the topic nicely wihtout overcomplicating it. GDallimore (Talk) 18:29, 26 March 2010 (UTC)

I'll accept the current version, but FWIW, here's an example of this article's narrow scope leading to confusion: [14]

The tech journalist uses this article as a basis to reject worries about "submarine patents", but the worries came from [15] a standards committee worrying that "[o]ften, parties holding a submarine patent wait for a company with very deep pockets (like Apple, or Microsoft, or Google) to infringe on the patent before they sue." Clearly using the meaning I've noted.

Hopefully the mention of "patent ambush" in the intro will make this confusion less likely. Gronky (talk) 20:37, 26 March 2010 (UTC)

There's no confusion caused by the article's narrow scope. The first article you link to correctly defines submarine patents and correctly says their unlikely to be an issue. That article could also potentially be used as a reliable source, I believe. The second link calls something submarine patents that doesn't fit within the normally accepted definition. It also clearly is not a reliable source.

Just because some people who don't know better call things by the wrong name doesn't mean Wikipedia articles should start bowing to their mistakes. However, apart from the self-published source which I'll remove, I guess the lead doesn't pay too much heed to this misuse of the term.

Does it sound like I'm annoyed? Yes, I am. Half of the disagreements in patent law arise because people cannot agree on definitions and misapply terminology until nobody knows what anyone is talking about. GDallimore (Talk) 00:08, 27 March 2010 (UTC)

The first article's description of "submarine patent" is a summary of this article, it can't then be used as a "source".

The confusion is obvious because someone said they were worried about patent ambush (which they attributed to "submarine patents") regarding the Theora format, released in 2000. They're not talking about the worries of an application that's still pending after 10 years, but the author of the osnews.com article took Wikipedia's definition as the only definition, thus misunderstanding the problem, and proceeded to shoot down an argument that no one had made.

If you were asked to write some doctrine on patent law, then the prescriptive attitude would be reasonable, but we're writing an encycopedia here, which is meant to be descriptive. People use the term, nowadays, in the way I describe. Here's another example:[16], and another, neither of which is self-published. Wikipedia's job is to document the world, not to be used in a push for terminology standards in a profession. Gronky (talk) 01:58, 27 March 2010 (UTC)

I completely disagree. The less presriptive version doesn't make any sense. There is no "emergence" and the analogy does not remotely hold. Idiotic on the part of whoever started using the term in that sense. The fact that some people have got it wrong needs mentioning, but it's a minority viewpoint not to be given undue weight.

If you want sources, do a Google book search. On the first two pages of results I found only one source that uses the broader meaning and another which called "discovered" patents "faux submarine patents". I'll add that source in later. GDallimore (Talk) 08:56, 27 March 2010 (UTC)

Wait a minute. I've now looked at those sources you've just mentioned properly and neither of them define submarine patents in the way that you use at the beginning of this thread. They don't define submarine patents at all. GDallimore (Talk) 15:07, 27 March 2010 (UTC)

I've given four references, none of which are self-published, which use the term "submarine patent" when talking about published patents which remain unseen until someone notices it would be profitable to now enforce them:

• http://www.legalaffairs.org/issues/May-June-2005/argument_rosenblum_mayjun05.msp

"submarine patents" by rewarding companies that fail to publicize their inventions - note they talk about failing to publicise, which is not your "delaying publication by the patent office" meaning

• http://perens.com/Articles/PatentFarming.html

The Eolas case is a good illustration of a submarine patent. A purported inventor held a patent on a widely used feature of HTML, the standard that describes the format of web pages. The patent holder did not make his patent known for years, and then sued Microsoft for use of his principle.

• http://www.streamingmedia.com/article.asp?id=11746

Ogg Theora, it has a chance to be the first to seriously threaten H.264, at which point the submarine patents will either surface, or they won't. - Ogg Theora is technology from before 2000. In 2010, it seems clear to me they're not talking about your delayed publication idea, and they are talking about oportunisticly making people aware of their patents, so that fits my meaning.

• http://arstechnica.com/open-source/news/2009/07/decoding-the-html-5-video-codec-debate.ars

Same reasoning as the above.

I'm not sure what references policy you're saying they violate. Gronky (talk) 06:36, 29 March 2010 (UTC)

Origin

I realize this is OR, but take a look at the Google News Archive search on "submarine patent". I appears to have abruptly emerged in 1994, shorly after Lemelson's patent issued .--Nowa (talk) 01:01, 27 March 2010 (UTC)

Here is a book reference from 1962.--Nowa (talk) 01:07, 27 March 2010 (UTC)

Current use of the term "Submarine Patent"

It seems to me that the term "submarine patent" is currently commonly used in conjunction with standards setting and disputes over to what extent different competing standards (e.g. H.264 vs Ogg Theora for HTML 5) is or is not "patent free". This is especially important in the development of open souce alternatives to proprietary protocols. One of the challenges that open source programers face is the difficulty of knowing whether or not a give code inadvertently infringes an issued patent even though, theoretically, patents are fully public. Here's a Google search. Perhaps some of these references could be used to expand the article. --Nowa (talk) 11:37, 27 March 2010 (UTC)

We've kinda spent the last three days discussing this, above: #Granted, unseen submarine patents. After those interesting discussions, I now think patent ambush is the term that should have been used in the discussions you mention. But you're right, they do use the term "submarine patent" in that way, so this article should contain some mention of it. I've settled for having it mentioned in a sentence at the end of the intro. Is the wording of that insufficiently clear? Any ideas on how it could be made clearer (while still leaving the proper discussion of this situation for the patent ambush page)?

Gronky (talk) 06:46, 28 March 2010 (UTC)

One of the criticisms of patents in general is that it is hard to know if a product is infringing one of them. In that sense, patents are "hidden" and appear to be "submarines" even though they are published and electronically searchable. A discussion along those lines would be appropriate if we can find the right references. --Nowa (talk) 03:06, 29 March 2010 (UTC)

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