1. SUBMARINE PATENTS
Submarine Patents were prevalent under United States Patent Law before that country signed up to TRIPS i.e. Trade Related Aspects of Intellectual Property.
However, US Patent Law has been brought into line with that of other signatories to the TRIPS Agreement.
Consequently, Patent Applications are published 18 months after their filing date, i.e. the Priority Date of the Application. Even where an original Patent Application is followed by a Continuation Application, the later Application is published within 6 months of filing and takes the original Priority date.
Thus, the prevalence of Submarine Patents has been diminished if not totally eradicated.
2. THE DANGER OF A SUBMARINE PATENT
The danger of a Submarine Patent was that, by delaying the publication of the filed document for many years, the Applicant could keep a watch on developing technology and tweak the Claims of their pending Application in order to trap unsuspecting third parties who may be infringing the rights granted by the Issued Patent.
Whereas this danger has been reduced there still remains the ever-present danger of Patents that are granted long after the Application has been published.
Therefore, it is essential that a watching brief is maintained in relation to the patent activities of likely competitors, who, like the owners of Submarine Patents, would amend their Claims in order to launch actions for infringement of their patent rights.
3. GERMAN AND JAPANESE – EXAMINATION REQUEST
Although they are not Submarine Patents that were prevalent in the USA before that country signed up to the TRIPS Agreement, Patent Applications in Germany and Japan may be subject to delayed Examination for up to 7 years after the filing of the Application.
Consequently, a situation can arise where third party interests in those countries are prejudiced by the Grant of a Patent up to 10 years after the filing of the basic Patent Applications in Germany and/or Japan.
In order to guard against such a situation it is advised that a watching brief be maintained on the patent activities of competitors and anyone who’s published Patent
Applications may impact on the business interests of you and/or your company.
From personal experience, I have been involved with a patent portfolio that was undermined, even though Licences had been granted to third parties in Australia and other parties were being sued for infringing the Patent Rights of the company in France.
This was as a result of a Japanese company delaying Examination of their Patent Application for 7 years and, upon Grant of their Patent some 10 years after the original filing date, it was evident that my Company’s Patents were invalid.
To happen once is a disaster; however, this scenario was to be visited some 2 years later in relation to a second patent portfolio with some embarrassment for the executives of a sister company who had developed the technology that was supposed to be protected by the Patents in many countries worldwide.
Needless to say, a very costly lesson was learnt and watching briefs became a prerequisite part of the patent activity of all companies within the Group.
4. WATCHING BRIEFS
Watching briefs may be conducted in-house by subscribing to any professional search organisation or by commissioning such bodies to review the weekly publications of patent applications in your fields of interests and to provide a set of Abstracts for you and/or your Patent Attorney. In this way, you may avoid the infringement of patent rights of your competitors and others.
*John Grant is Senior Patent Attorney at Trevor Baylis Brands (TBB) plc. TBB has provided advice to thousands of individuals and companies on the best way to develop their business and protect their intellectual property. Building Enterprise (BE) Ltd is a new development from TBB offering a one-stop shop for innovation development, helping to take initial ideas through to a successful commercial outcome.*
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