In a study of 9,500 patent applications that had received a notice of allowance, I found that about 2.3% were abandoned rather than paying the issue fee.
“Filing a continuation after allowance does not open you up to intervening prior art.”
It also does not get you any extra term – you be stuck with the priority date. Contrast this with your later (and still incorrect) statement of “The fact that I’m sacrificing initial patent term to do it…“. You simply cannot have both. If it takes a Mooney-class in your face statement to show that you are wrong, you’ll just have to deal with it.
“Filing a continuation after allowance (in a non-published case) keeps a ‘grant’ under wraps.”
No – the grant is public – you cannot keep a granted patent private (in all non-IMHO-Ned-Law worlds, well, at least in this real world). Now the continuation may be kept private with a non-publication request – but that’s a differente story and one I’ve already explained. The problem you have is that for a continuation (not CIP), everything possible is public knowledge, thus, no submarine, even if the prosecution and any resulting claims are kept unpublished until that application’s maturation. This be no different than any application with a non-publication request – like I say – you be hating the non-publication avenue (even if you don’t be saying it directly).
35
“willingness to sacrifice intial patent term” = no submarine. You give up your priority at your peril, since doing so opens you up to any intervening prior art. If the art is not intervening, then you have no beef.
Filing a continuation after allowance does not open you up to intervening prior art.
“keep a grant under wraps” = you cannot keep a grant under wraps. If the patent is granted, it is public. Period.
Filing a continuation after allowance (in a non-published case) keeps a ‘grant’ under wraps. You risk the examiner finding previously-missed prior art or shifting to a new claim interpretation, but you do have most of a bird-in-the-hand.
Any other ideas occur to you while you are in the bathtub with your toys?
Yes, that your reading comprehension is sub-par and that you’re a Mooney-class jerk.
What it seems to boil down to is that you just don’t like the non-publication avenue. How dare someone keep their pre-patent stuff to themselves and try to stick with the original Quid-Pro-Quo deal.
I didn’t express an opinion about it. I explained how submarining was still possible. If I file a series of applications as non-pubs and defer grant by filing continuations until the market is practicing the invention, that’s a form of submarine patent. The fact that I’m sacrificing initial patent term to do it does little to change the ultimate effect.
34
Ping, I’ve had comments like what we are having here with the people I respected who seem to think that merely changing a patent expiration date to 20 years from filing operated as a total cure to the “submarine patent problem.” This person was a patent counsel of a company that had to deal with both Lemelson and Hyatt. Perhaps this fact biased his view. However there were others who continued to advocate for the publication of patents for the very purpose of monitoring their prosecution.
To both you and 7 I would like to point out that there are “intervening rights” in the patent statute for a reason. Those who rely to their detriment on the existing state of claims only to have the rug pulled out from under them by claims that issue in a reissue patent that may be broader or correct other defects, have all but a statutory right to intervening rights. Of course they must apply to the judge and explain their case, but if there reliance is a good faith, I suspect the court will order for continued manufacture even if they are ajudged to be an infringer.
Now the situation with an issued patent and with a submarine continuation is exactly the same as with an issued patent and a reissue. One can design around the claims of an issued patent and still be torpedoed by the claims in a submarine continuation. But here, there are no intervening rights. Historically at least, that is until eBay, any patent holder could obtain an injunction and shut down your design around regardless of how expensive that might be.
Recognizing this problem, I have been among those who have long advocated for the concept of “prior use” rights. Properly structured, prior use rights could be administered exactly like the reissue statute’s intervening rights were the court could way the equities of the situation and provide for continued manufacture when justice demanded it.
To Max, obviously the Europeans understand this issue very well. This is why they have limited the time period for filing of divisionals to two years. This is also why limitation actions can only narrow claims and cannot broaden them at all. So do not give me any bull please that this issue does not and cannot occur in the magnificent empire of the EPO. It does.
33
Interesting from 7. Thanks for confirming that 35 USC 112 = Art 123(2) in Europe.
An EPO Exr, working in English as a foreign language, reasons that an amendment to replace one word with its exact synonym is pointless, brings no clarification of meaning and brings nothing else positive, but does expose Applicant to post-issue validity attacks under Art 123(2). Denying it is no hardship to Applicant. In fact, it is a kindness. (7, have you ever been on the receiving end of Art 123(2) attacks on claim 1, in post-issue EPO opposition proceedings. Believe me, you never want to be there).
But, if the replacement word is in actual fact NOT an exact synonym, then it likely adds matter (why else is Applicant so keen to get it in?) and so it is fair to deny it admission.
Where is that EPO thinking in error, pray?
32
“Me, I like (sorry to be boring again) the EPO way. Publication after 18 months, up to a cut-off date unlimited scope for filing divisionals, but such a strict filter on adding new matter that Ned can do a solid clearance study on the basis of nothing more than the WO publication.”
That exists here too. It’s called 112. Only we allow a tiny bit more leeway than the EPO does, in that you probably won’t receive a new matter rejection if you use a synonym of a word in the spec and not the actual word, or probably won’t receive a new matter rejection if you use a paraphrased version of a clause in the spec.
Ned really makes no sense here.
31
“As a matter of logic, does the classic patent system Quid pro Quo mandate no publication prior to grant? I think not.”
Not surprisingly, we disagree. But ask yourself Maxie, after the Quo be taken, what drives the giving of the Quid? What recourse does the inventor have? For all those that give Quo, but not receive Quid, how do you “un-publish” that Quo taken early? Cause the government “already having gotten theirs” motivates the poor quality and backlog we see. The astonishing lack of insight into the general human nature is amazing. Have you heard the adage “Why buy the cow when the milk is being given away for free?” Sure people still line up – but that’s a non-sequitur – just ask P.T. Barnum (and of course, you do remember that the USPTO is a monopoly in giving out the world’s most prized patent, do you not?).
It aint a submarine (even if you do repeat yourself)- try a little historical context before bandying about that term.
Lastly, your “such a strict filter” is already in place here and still Ned thinks that the publication is not enough. That somehow, claims beyond what is published are possible or the scope of claims is not foreseeable or both.
The conflation of errors about the term “submarine” and misunderstanding the dynamics of Quid-Pro-Quo would be amusing, if only Joe Inventor weren’t getting shafted with the spewing of FUD (another hint of FUD – the use of “troll”, like asserting your rights is somehow “bad”), and the unintended consequences of Quo-first-and-maybe-later-maybe-much-later-maybe-not-at-all-cause-we-feel-like-it-Quid.
30
As a matter of logic, does the classic patent system Quid pro Quo mandate no publication prior to grant? I think not.
The deal is that he who makes an enabling disclosure of new and non-obvious matter that is patent eligible is in line for a limited term monopoly. That was all that “I the people” promised. When you filed your app you knew what you were getting into, didn’t you?
Look, I have here to balance the interests of inventors against the interests of folks like Ned Heller’s scrupulously honest manufacturing client, who with his design arounds is simply trying to earn a crust, to keep his employees (and his patent attorney) in work, but keeps getting stung by submarine, yes submarine, apps of the troll who is assailing him.
Me, I like (sorry to be boring again) the EPO way. Publication after 18 months, up to a cut-off date unlimited scope for filing divisionals, but such a strict filter on adding new matter that Ned can do a solid clearance study on the basis of nothing more than the WO publication.
29
Ned,
Only so much as ANY application with requested non-publication can have the affect you describe.
That aint be called a submarine – that be called old fashioned Quid-Pro-Quo.
28
ping, obviously you have not been actually involved with real submarine cases. I have, as a defendant.
In one case, we were sued. We designed around. Their submarine patent application surfaced and torpedoed our design around. So much for designing around.
In another, the inventor had allowed claims, twice, but rolled them over into a continuation. The patent application was secret. After the industry had adopted his “invention” (it really was not enabled), he allowed his patent to surface, this time torpedoing an entire industry.
Submarine practice really involves secret prosecution. Even if you know of the spec and have analyzed issued patents, without the unpublished claims, you simply cannot design around with any reliability. It was and still is a problem.
27
So there nothin, Sunshine.
If you file a con, then everything possible is in the parent (no sub), if you file a CIP – you only get the older date for, once again, whatever’s published in the parent.
Still boils down to people not liking the original Quid Pro Quo of not sharing the Quo (non-publication) until Quid (patent grant).
As to Paul Morgan, the date time change is not ignored in error – it be ignored in practicality. You be talking apps filed at least fifteen years ago. If the fricken Office still has apps filed that long ago, than the poor basturds deserve all the patent term they can get. Don’t forget – any changes in amendments would still require full 112 support from the pre-1995 filed application (esp including the refurb’ed Ariad-type description). What art is that stagnant, or takes that long to prosecute (and don’t forget about prosecution lache defenses too) and would still be able to support the sub? Ya really think the population of such items is even worth mentioning?
Perhaps you need directions to the same clue-store that Ned just visited.
BTW Ned, that’s yet another adjective you described me with that ya gotta eat. That’s gotta irk ya somethin mighty.
26
I had a very vigorous discussion with another patent attorney on this issue several years ago, it does appear that one can request non publication in a continuation application where the parent has been published, provided there has been no foreign filing.
Hmmm.
25
I see that others have answered my point that submarining is still possible, albeit with a tradeoff of patent term.
Now Today did make the cogent point that the referenced study had to observe published applications therefor the abandonment probably had nothing to do with submarining, I will concede the point, — temporarily.
However, and I had a very vigorous discussion with another patent attorney on this issue several years ago, it does appear that one can request non publication in a continuation application where the parent has been published, provided there has been no foreign filing.
This does raise the possibility of submarining even if a prior application has been published.
Based on this, I have discussed, but have not actually done, filing a patent application with a picture claim for publication purposes (no foreign filing), and immediately filing a continuation application with broad claims, but filing it with a non publication request.
So there.
24
Sir Paul McCartney – just about as washed up as an oil slick on a Louisiana beach.
And yet still more credible than George W. Bush ever was, which makes RWA oh-so-angry.
There’s a federal judge in the other thread that need defending. That used to be one of your big causes. What happened?
23
Those assuming that genuine Lemelson or Hyatt style “submarine” patents are no longer possible are erroniously assuming that the PTO would not allow applications filed under the old patent term law, before June 8, 1995 [and not re-filed since] to still be submerged in the PTO on some examiners inherited docket. Unfortunately, and inexcusably, some still do keep surfacing and the PTO has not disclosed the number still pending.
And yes, even some patents with terms of 20 years [+ PTO delay extensions] from originally claimed filing dates do get delayed by old-fashioned continuations [rather than RCEs] in order to be able to keep on amending claims for years to get claims specifically written to cover subsequent products of others, which is legal.
22
Sir Paul McCartney – just about as washed up as an oil slick on a Louisiana beach.
21
Ned,
The whole point of priority being to the first priority date means that while a patentee may deliberately choose to keep a patent from issuing for 15 years, he will only have 5 years of exclusivity. Also no damages can be claimed until issuance.
If an industry arose in those 15 years and if the exercise of the exclusionary right would effectively shut down that industry (at least one unavoidably infringed patent claim), then yes, such patents would pose a problem. But I believe this will happen rarely. When it does, I hope a sane court would apply ebay principles and just assign running royalties.
20
TVOR – you are better off speechless.
“willingness to sacrifice intial patent term” = no submarine. You give up your priority at your peril, since doing so opens you up to any intervening prior art. If the art is not intervening, then you have no beef.
“keep a grant under wraps” = you cannot keep a grant under wraps. If the patent is granted, it is public. Period.
Any other ideas occur to you while you are in the bathtub with your toys?
What it seems to boil down to is that you just don’t like the non-publication avenue. How dare someone keep their pre-patent stuff to themselves and try to stick with the original Quid-Pro-Quo deal.
19
Yeah, ping. What do you think is going on when the applicant files a continuation instead of accepting allowed claims?
Ned,
Submarining is a poor explanation, considering that the application had to be public in order to fall into this 2.3%. A better explanation is that the stat is skewed by the bizzare 2 CON/1 RCE farce temporarily set up by the 2007 rules package.
Tell me how submarining can happen then Ned, when the patent term was changed to be tied to the earliest priority date and not to date of issue.
ping,
Because a willingness to sacrifice intial patent term combined with non-publication requests can keep a grant under wraps until a technology is established. A pool of infringers using a technology that is widely deployed and entrenched in years 10+ is more valuable than a new market reacting your fresh-from-the-USPTO “design around this” sign in year 4, assuming that you can avoid prosecution laches.
“Don’t fire until you see the whites of their eyes,” through your periscope.
18
Malcolm,
A yellow one to you – thanks.
17
What does the word “submarine” mean?
“It’s a happy place, that’s all. You know, it was just… We were trying to write a children’s song. That was the basic idea. And there’s nothing more to be read into it than there is in the lyrics of any children’s song.” – Sir Paul McCartney
16
Both are derogatory terms used to disparage people and practices asserting legitimate rights, gained in accordance with legitimate procedure, in a manner that is inconvenient to large corporations.
So is “anti-trust”, but that doesn’t shed much light on the actual meaning of the term, nor on the propriety of the assertion.
15
“submarine” is like “patent troll”
Both are derogatory terms used to disparage people and practices asserting legitimate rights, gained in accordance with legitimate procedure, in a manner that is inconvenient to large corporations.
14
You used it first, you tell me (and keep in mind the historical context of that term, especially as it relates to Congressional changes to patent law – that is, if you are not “clueless” enough).
Or did you apply some IMHO-Ned-Law change to the usual and customary meaning of the term in the patent world?
13
What does the word “submarine” mean?
12
Tell me how submarining can happen then Ned, when the patent term was changed to be tied to the earliest priority date and not to date of issue.
You be the clueless one.
11
ping, you are really clueless.
10
Ned,
Oh I don’t know – something about the effective date leading back to the earliest claimed priority kinda defeats the notion of submarining.
But you keep thinking it’s 1952, ok?
9
$6,154,631/yr in unpaid issue fees.
(as a back-of-the-envelope estimate using 2009 utility issue #’s and 0.8 large E and 0.2 small E issue %’s)
167,350x[(0.8x(1510+300))+(0.2×755)]x0.023
8
Yeah, ping. What do you think is going on when the applicant files a continuation instead of accepting allowed claims?
7
I found that about 2.3% were abandoned rather than paying the issue fee.
The issue fee is really no different from a zeroth-year maintenance fee. The same considerations should apply – either the patent is worth keeping for the next four years at that price, or it’s not.
I wonder if you could somehow add an issue fee plot to this graph.
6
The Great Recession has forced many applicants to not pay any further fees on their applications and patents.
5
Dennis, please remove job postings as soon as the jobs are filled and no longer available.
4
“Submarine practice?”
Time-warping again, eh Ned?
3
Dennis, to check the hypos, could you tell if a continuation was filed? Could you tell if the application was published?
2
Claims too narrow?
Filed in favor of a continuation?
Submarine practice?
1
In a recent study of blog postings after a non-Bilksi decision, I found 2.3% had any substance.
YVOR,
You still be better off in silence.
“Filing a continuation after allowance does not open you up to intervening prior art.”
It also does not get you any extra term – you be stuck with the priority date. Contrast this with your later (and still incorrect) statement of “The fact that I’m sacrificing initial patent term to do it…“. You simply cannot have both. If it takes a Mooney-class in your face statement to show that you are wrong, you’ll just have to deal with it.
“Filing a continuation after allowance (in a non-published case) keeps a ‘grant’ under wraps.”
No – the grant is public – you cannot keep a granted patent private (in all non-IMHO-Ned-Law worlds, well, at least in this real world). Now the continuation may be kept private with a non-publication request – but that’s a differente story and one I’ve already explained. The problem you have is that for a continuation (not CIP), everything possible is public knowledge, thus, no submarine, even if the prosecution and any resulting claims are kept unpublished until that application’s maturation. This be no different than any application with a non-publication request – like I say – you be hating the non-publication avenue (even if you don’t be saying it directly).
“willingness to sacrifice intial patent term” = no submarine. You give up your priority at your peril, since doing so opens you up to any intervening prior art. If the art is not intervening, then you have no beef.
Filing a continuation after allowance does not open you up to intervening prior art.
“keep a grant under wraps” = you cannot keep a grant under wraps. If the patent is granted, it is public. Period.
Filing a continuation after allowance (in a non-published case) keeps a ‘grant’ under wraps. You risk the examiner finding previously-missed prior art or shifting to a new claim interpretation, but you do have most of a bird-in-the-hand.
Any other ideas occur to you while you are in the bathtub with your toys?
Yes, that your reading comprehension is sub-par and that you’re a Mooney-class jerk.
What it seems to boil down to is that you just don’t like the non-publication avenue. How dare someone keep their pre-patent stuff to themselves and try to stick with the original Quid-Pro-Quo deal.
I didn’t express an opinion about it. I explained how submarining was still possible. If I file a series of applications as non-pubs and defer grant by filing continuations until the market is practicing the invention, that’s a form of submarine patent. The fact that I’m sacrificing initial patent term to do it does little to change the ultimate effect.
Ping, I’ve had comments like what we are having here with the people I respected who seem to think that merely changing a patent expiration date to 20 years from filing operated as a total cure to the “submarine patent problem.” This person was a patent counsel of a company that had to deal with both Lemelson and Hyatt. Perhaps this fact biased his view. However there were others who continued to advocate for the publication of patents for the very purpose of monitoring their prosecution.
To both you and 7 I would like to point out that there are “intervening rights” in the patent statute for a reason. Those who rely to their detriment on the existing state of claims only to have the rug pulled out from under them by claims that issue in a reissue patent that may be broader or correct other defects, have all but a statutory right to intervening rights. Of course they must apply to the judge and explain their case, but if there reliance is a good faith, I suspect the court will order for continued manufacture even if they are ajudged to be an infringer.
Now the situation with an issued patent and with a submarine continuation is exactly the same as with an issued patent and a reissue. One can design around the claims of an issued patent and still be torpedoed by the claims in a submarine continuation. But here, there are no intervening rights. Historically at least, that is until eBay, any patent holder could obtain an injunction and shut down your design around regardless of how expensive that might be.
Recognizing this problem, I have been among those who have long advocated for the concept of “prior use” rights. Properly structured, prior use rights could be administered exactly like the reissue statute’s intervening rights were the court could way the equities of the situation and provide for continued manufacture when justice demanded it.
To Max, obviously the Europeans understand this issue very well. This is why they have limited the time period for filing of divisionals to two years. This is also why limitation actions can only narrow claims and cannot broaden them at all. So do not give me any bull please that this issue does not and cannot occur in the magnificent empire of the EPO. It does.
Interesting from 7. Thanks for confirming that 35 USC 112 = Art 123(2) in Europe.
An EPO Exr, working in English as a foreign language, reasons that an amendment to replace one word with its exact synonym is pointless, brings no clarification of meaning and brings nothing else positive, but does expose Applicant to post-issue validity attacks under Art 123(2). Denying it is no hardship to Applicant. In fact, it is a kindness. (7, have you ever been on the receiving end of Art 123(2) attacks on claim 1, in post-issue EPO opposition proceedings. Believe me, you never want to be there).
But, if the replacement word is in actual fact NOT an exact synonym, then it likely adds matter (why else is Applicant so keen to get it in?) and so it is fair to deny it admission.
Where is that EPO thinking in error, pray?
“Me, I like (sorry to be boring again) the EPO way. Publication after 18 months, up to a cut-off date unlimited scope for filing divisionals, but such a strict filter on adding new matter that Ned can do a solid clearance study on the basis of nothing more than the WO publication.”
That exists here too. It’s called 112. Only we allow a tiny bit more leeway than the EPO does, in that you probably won’t receive a new matter rejection if you use a synonym of a word in the spec and not the actual word, or probably won’t receive a new matter rejection if you use a paraphrased version of a clause in the spec.
Ned really makes no sense here.
“As a matter of logic, does the classic patent system Quid pro Quo mandate no publication prior to grant? I think not.”
Not surprisingly, we disagree. But ask yourself Maxie, after the Quo be taken, what drives the giving of the Quid? What recourse does the inventor have? For all those that give Quo, but not receive Quid, how do you “un-publish” that Quo taken early? Cause the government “already having gotten theirs” motivates the poor quality and backlog we see. The astonishing lack of insight into the general human nature is amazing. Have you heard the adage “Why buy the cow when the milk is being given away for free?” Sure people still line up – but that’s a non-sequitur – just ask P.T. Barnum (and of course, you do remember that the USPTO is a monopoly in giving out the world’s most prized patent, do you not?).
It aint a submarine (even if you do repeat yourself)- try a little historical context before bandying about that term.
Lastly, your “such a strict filter” is already in place here and still Ned thinks that the publication is not enough. That somehow, claims beyond what is published are possible or the scope of claims is not foreseeable or both.
The conflation of errors about the term “submarine” and misunderstanding the dynamics of Quid-Pro-Quo would be amusing, if only Joe Inventor weren’t getting shafted with the spewing of FUD (another hint of FUD – the use of “troll”, like asserting your rights is somehow “bad”), and the unintended consequences of Quo-first-and-maybe-later-maybe-much-later-maybe-not-at-all-cause-we-feel-like-it-Quid.
As a matter of logic, does the classic patent system Quid pro Quo mandate no publication prior to grant? I think not.
The deal is that he who makes an enabling disclosure of new and non-obvious matter that is patent eligible is in line for a limited term monopoly. That was all that “I the people” promised. When you filed your app you knew what you were getting into, didn’t you?
Look, I have here to balance the interests of inventors against the interests of folks like Ned Heller’s scrupulously honest manufacturing client, who with his design arounds is simply trying to earn a crust, to keep his employees (and his patent attorney) in work, but keeps getting stung by submarine, yes submarine, apps of the troll who is assailing him.
Me, I like (sorry to be boring again) the EPO way. Publication after 18 months, up to a cut-off date unlimited scope for filing divisionals, but such a strict filter on adding new matter that Ned can do a solid clearance study on the basis of nothing more than the WO publication.
Ned,
Only so much as ANY application with requested non-publication can have the affect you describe.
That aint be called a submarine – that be called old fashioned Quid-Pro-Quo.
ping, obviously you have not been actually involved with real submarine cases. I have, as a defendant.
In one case, we were sued. We designed around. Their submarine patent application surfaced and torpedoed our design around. So much for designing around.
In another, the inventor had allowed claims, twice, but rolled them over into a continuation. The patent application was secret. After the industry had adopted his “invention” (it really was not enabled), he allowed his patent to surface, this time torpedoing an entire industry.
Submarine practice really involves secret prosecution. Even if you know of the spec and have analyzed issued patents, without the unpublished claims, you simply cannot design around with any reliability. It was and still is a problem.
So there nothin, Sunshine.
If you file a con, then everything possible is in the parent (no sub), if you file a CIP – you only get the older date for, once again, whatever’s published in the parent.
Still boils down to people not liking the original Quid Pro Quo of not sharing the Quo (non-publication) until Quid (patent grant).
As to Paul Morgan, the date time change is not ignored in error – it be ignored in practicality. You be talking apps filed at least fifteen years ago. If the fricken Office still has apps filed that long ago, than the poor basturds deserve all the patent term they can get. Don’t forget – any changes in amendments would still require full 112 support from the pre-1995 filed application (esp including the refurb’ed Ariad-type description). What art is that stagnant, or takes that long to prosecute (and don’t forget about prosecution lache defenses too) and would still be able to support the sub? Ya really think the population of such items is even worth mentioning?
Perhaps you need directions to the same clue-store that Ned just visited.
BTW Ned, that’s yet another adjective you described me with that ya gotta eat. That’s gotta irk ya somethin mighty.
I had a very vigorous discussion with another patent attorney on this issue several years ago, it does appear that one can request non publication in a continuation application where the parent has been published, provided there has been no foreign filing.
Hmmm.
I see that others have answered my point that submarining is still possible, albeit with a tradeoff of patent term.
Now Today did make the cogent point that the referenced study had to observe published applications therefor the abandonment probably had nothing to do with submarining, I will concede the point, — temporarily.
However, and I had a very vigorous discussion with another patent attorney on this issue several years ago, it does appear that one can request non publication in a continuation application where the parent has been published, provided there has been no foreign filing.
This does raise the possibility of submarining even if a prior application has been published.
Based on this, I have discussed, but have not actually done, filing a patent application with a picture claim for publication purposes (no foreign filing), and immediately filing a continuation application with broad claims, but filing it with a non publication request.
So there.
Sir Paul McCartney – just about as washed up as an oil slick on a Louisiana beach.
And yet still more credible than George W. Bush ever was, which makes RWA oh-so-angry.
There’s a federal judge in the other thread that need defending. That used to be one of your big causes. What happened?
Those assuming that genuine Lemelson or Hyatt style “submarine” patents are no longer possible are erroniously assuming that the PTO would not allow applications filed under the old patent term law, before June 8, 1995 [and not re-filed since] to still be submerged in the PTO on some examiners inherited docket. Unfortunately, and inexcusably, some still do keep surfacing and the PTO has not disclosed the number still pending.
And yes, even some patents with terms of 20 years [+ PTO delay extensions] from originally claimed filing dates do get delayed by old-fashioned continuations [rather than RCEs] in order to be able to keep on amending claims for years to get claims specifically written to cover subsequent products of others, which is legal.
Sir Paul McCartney – just about as washed up as an oil slick on a Louisiana beach.
Ned,
The whole point of priority being to the first priority date means that while a patentee may deliberately choose to keep a patent from issuing for 15 years, he will only have 5 years of exclusivity. Also no damages can be claimed until issuance.
If an industry arose in those 15 years and if the exercise of the exclusionary right would effectively shut down that industry (at least one unavoidably infringed patent claim), then yes, such patents would pose a problem. But I believe this will happen rarely. When it does, I hope a sane court would apply ebay principles and just assign running royalties.
TVOR – you are better off speechless.
“willingness to sacrifice intial patent term” = no submarine. You give up your priority at your peril, since doing so opens you up to any intervening prior art. If the art is not intervening, then you have no beef.
“keep a grant under wraps” = you cannot keep a grant under wraps. If the patent is granted, it is public. Period.
Any other ideas occur to you while you are in the bathtub with your toys?
What it seems to boil down to is that you just don’t like the non-publication avenue. How dare someone keep their pre-patent stuff to themselves and try to stick with the original Quid-Pro-Quo deal.
Yeah, ping. What do you think is going on when the applicant files a continuation instead of accepting allowed claims?
Ned,
Submarining is a poor explanation, considering that the application had to be public in order to fall into this 2.3%. A better explanation is that the stat is skewed by the bizzare 2 CON/1 RCE farce temporarily set up by the 2007 rules package.
Tell me how submarining can happen then Ned, when the patent term was changed to be tied to the earliest priority date and not to date of issue.
ping,
Because a willingness to sacrifice intial patent term combined with non-publication requests can keep a grant under wraps until a technology is established. A pool of infringers using a technology that is widely deployed and entrenched in years 10+ is more valuable than a new market reacting your fresh-from-the-USPTO “design around this” sign in year 4, assuming that you can avoid prosecution laches.
“Don’t fire until you see the whites of their eyes,” through your periscope.
Malcolm,
A yellow one to you – thanks.
What does the word “submarine” mean?
“It’s a happy place, that’s all. You know, it was just… We were trying to write a children’s song. That was the basic idea. And there’s nothing more to be read into it than there is in the lyrics of any children’s song.” – Sir Paul McCartney
Both are derogatory terms used to disparage people and practices asserting legitimate rights, gained in accordance with legitimate procedure, in a manner that is inconvenient to large corporations.
So is “anti-trust”, but that doesn’t shed much light on the actual meaning of the term, nor on the propriety of the assertion.
“submarine” is like “patent troll”
Both are derogatory terms used to disparage people and practices asserting legitimate rights, gained in accordance with legitimate procedure, in a manner that is inconvenient to large corporations.
You used it first, you tell me (and keep in mind the historical context of that term, especially as it relates to Congressional changes to patent law – that is, if you are not “clueless” enough).
Or did you apply some IMHO-Ned-Law change to the usual and customary meaning of the term in the patent world?
What does the word “submarine” mean?
Tell me how submarining can happen then Ned, when the patent term was changed to be tied to the earliest priority date and not to date of issue.
You be the clueless one.
ping, you are really clueless.
Ned,
Oh I don’t know – something about the effective date leading back to the earliest claimed priority kinda defeats the notion of submarining.
But you keep thinking it’s 1952, ok?
$6,154,631/yr in unpaid issue fees.
(as a back-of-the-envelope estimate using 2009 utility issue #’s and 0.8 large E and 0.2 small E issue %’s)
167,350x[(0.8x(1510+300))+(0.2×755)]x0.023
Yeah, ping. What do you think is going on when the applicant files a continuation instead of accepting allowed claims?
I found that about 2.3% were abandoned rather than paying the issue fee.
The issue fee is really no different from a zeroth-year maintenance fee. The same considerations should apply – either the patent is worth keeping for the next four years at that price, or it’s not.
I wonder if you could somehow add an issue fee plot to this graph.
The Great Recession has forced many applicants to not pay any further fees on their applications and patents.
Dennis, please remove job postings as soon as the jobs are filled and no longer available.
“Submarine practice?”
Time-warping again, eh Ned?
Dennis, to check the hypos, could you tell if a continuation was filed? Could you tell if the application was published?
Claims too narrow?
Filed in favor of a continuation?
Submarine practice?
In a recent study of blog postings after a non-Bilksi decision, I found 2.3% had any substance.
File this thread under “Filler”.
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