So far this year, the USPTO has issued only nine patents with filing dates of before June 8, 1995. That date represents an important turning point in patent law. Patents filed before that date have a term of 17–years from the issuance date. Later filed patents have a term of 20–years from the filing date.
Of the seven recent patents based upon old applications. Barring a terminal disclaimer or failure to pay a maintenance fee, all of these will be in force until 2029 and all are based on a filing date of 1995 or before.
More info:
- Secrecy Orders: Pat. Nos. 8,119,959 (Flight control of missiles); 8,132,494 (Ballistic resistant composite article having improved matrix system); 8,111,581 (Monitoring system for a ship’s radiated noise) and 8,111,584 (method of detecting a submerged vessel in or near the wake of a ship).
- Delay in considering whether to institute an interference: Pat. Nos. 8,102,419 (film-to-digital scanning algorithm) and 8,099,154 (therapeutic acoustic pressure wave generator).
- Prosecution suspended while re-examining a family member application: Pat. No. 8,112,782 (based upon Personalized Media Communications family of patents).
- Abandonment + Revival and examination of several hundred claims through including multiple amendments: Pat. No. 8,097,405 (Enzo Biochem patent).
- Eight rejections + claim amendments: Pat. No. 8,101,149 (Claim 1 in full: “Purified cage molecules consisting of carbon atoms.” Owned by Mitsubishi).
Note – I updated this on 3/15/2012 to correct for an error in my database that was identified by a US Patent Examiner.
Apart from those held under secrecy order, I suspect that there are now around 400 pre-URAA applications still pending at the USPTO.
From personal experience, it appears the PTO has made a policy of never allowing some of these cases even though the claims are not new and they cover the patent owner’s product. I assume this continued delay is because the monopoly extension caused by the PTO’s delay to date would be politically unpalatable.
Imagine I thought He left because of the Mail Fraud Was D.A. the Mail Man? I can’t believe I found all this together. It proves I do have an Estate and that you sold my Property “””””””AFTER YOU %^&*() IT UP””””””””””
Whatever, I have it all here! What a mess you have made. You even told Burroughs he had better leave this is not CIVIL!
Maybe his case got lost at the courthouse or they’re still deciding if the inventions are independent and distinct.
Don’t rule out flamboyant cheating by the PTO.
An inventor sued the PTO under the Administrative Procedure Act over a restriction requirement. The PTO stipulated out. That was ten year ago. While the case is now unrestricted, the PTO has somehow never gotten around to ever issuing another Office Action on the merits.
“Thus, even if one had looked at the application as published years earlier, that alone will not tell you”
Incorrect. See the comment about new matter.
Also, if after two years (and no broadening reissue), the outer parameter is established by those claims regardless of initial spec.
The sky is not falling. The submarines are docked.
Leopold Bloom, (11/29/2000 – publication).
You both make good points, but in the EPO one cannot expand a mechanical or electrical species claim into an broader generic or otherwise infringed claim for 20 or more years after both the filing date and publication date of the application [if you wnat to keep it pending that long, as some do in the U.S.] Also in the U.S. one can add all kinds of spec. limitations to a previously overbroad invalid claim that will change that claim into a claim much harder to invalidate yet still be infringed by the product you have in hand to write the new claim to cover, and you can contiue do that for as long as any continuation or divisional is still pending. Thus, even if one had looked at the application as published years earlier, that alone will not tell you if any of those kinds of claims will ultimately issue or not. So the “submarines are not fully docked” in the U.S. even though most are now limited to patent terms of 20 years from their orignal filing date plus BIG term extensions for their PTO delays.
P.S. Lemelson is dead, but I doubt if all of his pending applications are, and Gilbert Hyatt is very much alive, with applications pending for a very long time with hundreds of new claims, as evidenced by the batch reportely headed to the Supreme Court for not getting even more pendency time for de novo civil case review, if I recall that correctly?
Since June 1995?
Back to school.
“Of the seven recent patents based upon old applications.”
This do be not appear to of being a sentence.
+1
Ned Heller take note.
Ned Heller, think Lemelson. Precisly: were not published and remained secret until they were granted. Combined with term from grant is the danger therein.
Publication and term from earliest filed priority has docked that submarine.
You have made my point for me.
“Now that we are in the FTF era,”
No.
Do not import law that is not ours. “Sensitivity” as such is ultra vires.
With the exception of a trivial number of patents and applications filed pre-June-1995, prosecution delays in the US are harmless. Why:
1. since June 1995, the vast majority of pending applications were published, as filed, 18 months after the earliest declared priority date
2. from that publication you can firmly opine what scope of protection is achievable, however long the cascade of successive generations of continuations and/or divisionals. You can do this because the US patent law’s “new matter” provision avowedly is there to prevent any Applicant at any time from improving on the scope for disclosure deal set out in the app as filed. In the US, the premier skill is drafting.
But then, the US revised its patent law effective 1995, based at least in part on the painful experience of submarine patents in the USA.
Now, what is it that we are arguing about?
Rigby, think Lemelson.
Even without adding new matter, old applicantions can be mined for everything they disclose — at least historically — and without intevening rights.
Now that we are in the FTF era, we might be more sensitive to late claiming, not of broader versions of previously claimed inventions, but of inventions that are disclosed but not previously claimed. The reissue statute seems to allow that these inventions be claimed, but does impose intervening rights.
Prosecution delays in the EPO are harmless. Why:
1. everything pending was published, as filed, 18 months after the earliest declared priority date
2. from that A publication you can firmly opine what scope of protection is achievable, however long the cascade of successive generations of EPO divisionals. You can do this because the EPC “new matter” provision avwedly is there to prevent any Applicant at any time from improving on the scope for disclosure deal set out in the app as filed. In Europe, the premier skill is drafting.
But then, Europe wrote its brand spanking new patent law in 1973, with painful experience of submarine patents in the USA. Patent experts in England are fond of joking “You can learn a lot from observing what the USA does. Watch, and then be careful not to do the same”.
“400 pre-URAA applications still pending at the USPTO.” This is inexcusable
The submarine has docked.
Even allowing for added claims later in continuations (to attempt to cover subsequent actual products of others), there can be no new added matter.
Max, first, the EPO prosecution delays for many of its pending applications are not anything to brag about either.
Secondly, any U.S. applications filed or re-filed after June 8, 1995 have patent terms that run for 20 years [plus extensions for PTO delays] from their original filing date [their earliest claimed priority date] NOT from their issue date. Unlike the prior patent term system, the incentive for multiple serial continuations and divisionals to greatly extend patent terms is thereby somewhat reduced. [But that is still attractive to be able to drastically change claims to cover subsequent actual products of others. [Counting on prosecution delays by those examiners who will not to take up continuations before easier to handle new applications that were filed much later.]
Oh Mann,
You may be up Schitz Creek.
The content of these cases emerges first when the patent issues, and “all of these will be in force until 2029 and all are based on a filing date of 1995 or before”
Now, the further back in the past is the filing date, the higher is the presumption of validity of any one of their claims (including those claims painstakingly drafted in the last year or two).
No wonder so many posters here think the new patent system is a retrograde step.
I guess I don’t feel so bad that some of mine have some waiting over ten years and still aren’t allowed.
I don’t think I’d call mine submarine patents though. At the current pace, they won’t likely surface before they expire. I wasn’t in the Navy but from a US Marine grunt’s perspective, I doubt they’ll ever be able to fire a torpedo.
I’ve got five allowed patents and a dozen or so pending. I won’t file another patent. There is no working patent system for individual inventors.
Thanks for digging out the estimated number of 400 or so remaining truely “submarine” patent applications still “submerged” in the PTO [by grossly delayed prosecution for all those years] yet fully enforcable for 17 more years after they finally “surface.” Some companies will undoubtedly be very unpleasantly unexpectedly “torpedoed” by claims specifically added or amended to cover their products in patents claiming priority dates from before they were born.
[But this number is an improvement over the more than 2000 of just a few years ago before Dave Kappos and Bob Stoll started a project to surface more of them.]
It was very interesting
I am Fatemeh Ghanbari
Attorney and university professor
Of Iran
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