17 Years After TRIPS, Do Submarine Patents Still Lurk in the Depths of Patent Data?

Post Date: October 17, 2012

As a matter of fact they do!  So far, in 2012, there have been 23 patents granted that you could consider to be submarine patents, and some of them are very important patents that may greatly impact the industries in which they are relevant!

Despite the fact that the Wikipedia article on submarine patents says it is no longer possible, I suspect that we’ll see submarine patents for several more years to come. My mother always warned me to never fully trust Wikipedia!
 

What is a Submarine Patent?

Submarine patents are those that remain stealthy during patent prosecution, and emerge after an unusually long prosecution period to ambush the relevant market because several conditions are met.  
 
First, the applications were never published, and second they were filed before June 8th, 1995 when the TRIPS Agreement (Agreement on Trade Related Aspects of Intellectual Property Rights) went into effect.   TRIPS changed the expiration rules so submarine patents are no longer possible—OK, Wikipedia is not completely wrong, just incomplete in their answer.
 
The third and less relevant requirement is that the publication delays were “intentional.”  But from the perspective of the market they upset, intention is irrelevant because the patents are fully enforceable for 17 years after their grant date!
 
Patents filed on or after June 8th, 1995 can never be submarine patents because they will expire 20 years after filing (subject to normal term extensions or terminal disclaimers) no matter when they finally grant.  But those little devils filed before this date can haunt an industry and can be a major windfall for the patent rights holder.  And as you see, they still pop up 17 years after the TRIPS agreement was put in force.
 
Submarine patents can be a financial windfall for their owners and a major cost of doing business for competitors who have been unknowingly infringing for decades. 
 

How to find submarine patents using AcclaimIP?

For a submarine patent to exist, you have to find patents that were filed on or before June 7th, 1995 AND were also granted with excessive pendency—which is a judgment call you make.
 
 
Submarine Patents Granted Since 2005
 
For example, login to AcclaimIP and paste this query into the Quick Search box.
 
APD:[* to 06/07/1995] AND ISD:[2005 to 2012] NOT PT:RE
 
Notice that I used range queries to express each date.
 
There are three clauses in this query.  The first clause, APD, restricts the file date from * to on or before 06/07/1995.  The second clause, ISD, restricts the issue date from 2005 to 2012.  I also used 2005 as a start date in the ISD clause because it is reasonable to consider a patent with a 10-year pendency to be a submarine patent, but arguments can be made for a longer or shorter pendency.
 
The last clause, PT, eliminates Re-Issue patents because they usually assume the expiration date of the parent and don’t get the pre-TRIPS “Grant+17Years” expiration date.  
 
To view the patents granted in a particular year, just change the date range in the ISD clause to a specific year.  For example:
 
APD:[* to 06/07/1995] AND ISD:2012 NOT PT:RE
 
This query shows you the 23 submarine patents granted so far in 2012.
 
One amazing outlier in the data is patent US7898454 B1.  It was granted last year to “Her Majesty the Queen...” for a “Radar jamming method and apparatus” 45 years after its file date of 5/09/1966!  I wonder what the USPTO was doing with for 16,367 days since it was filed?  Think about that.  Patent rights from an invention probably originating from 1965 can be enforced until 2028—63 years later—almost old enough to collect social security :-)
 

Why Submarine Patents Still Occur

Submarine patents arise due to either excessively complicated interference during prosecution or because of government secrecy requirements.  I assume that if the applicant delays the prosecution intentionally, misconduct rules apply and the patent would never be granted.  I am not a patent lawyer, so if this is your intention, get legal advice first.
 
The vast majority of recent submarine patents come from either the defense industry (likely due to the secrecy requirement), or biotechnology industry (likely due to excessive interference proceedings). 
 

Conclusion

Clearly, the sun is setting on submarine patents, but they still can arise, as my analysis shows.  If you are a patent analyst and a client of AcclaimIP, then I hope you found the article to be provocative.  I think most users think that they can’t identify potentially dangerous submarine patents, but as you saw, it is a very simple query, and just a matter of giving the problem some thought.
 
TTFN
Matt Troyer