The Patent Reform Act of 2005: Continuation Applications and "Submarine Patents"

Wealth of Ideas Newsletter, 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.