by Dennis Crouch
Long before patent lawyers coined the term “submarine patent,” practitioners had a different name for the same mischief. I was reading through briefing in the old laches case of Chapman v. Wintroath, 252 U.S. 126 (1920) where respondent’s counsel Paul Synnestvedt described the practice of letting an application
Soak in the office for years until the trade had independently developed the invention, when the applicant would come out with a divisional application and pounce upon the unfortunates who had proceeded to build up a business on the invention.
Soak and pounce. It isn’t clear to me if Synnestvedt was intending “soak” to be in the same hidden-under-water sense as submarining, or if it was more of a marinade. Either way, the complaint is that applicants were using the Patent Office’s procedures to lie in wait while industry invests in technology, then emerging with claims calibrated to capture those investments by others.
The case involved deep well pump technology. The Chapmans filed their original patent application in 1909 with 34 claims and a lengthy specification. The application met “unusual difficulties” at the Patent Office and was still pending six years later. Meanwhile, John Wintroath filed his own application in 1912, received a patent in November 1913, and then watched as the Chapmans filed a divisional application in June 1915 copying the claims of his patent in order to prompt an interference. Wintroath cried foul, arguing that the Chapmans’ twenty-month delay in filing their divisional after his patent issued amounted to equitable laches and estoppel even though the statute at that time permitted a two-year delay.
Synnestvedt’s brief on behalf of Wintroath made an argument that would sound familiar to anyone who has followed the prosecution laches debates of the past two decades. He described the Patent Office practice of allowing divisional applications on features “shown and described but not theretofore claimed” as a “totally unwarranted practice” that had been “followed by the Patent Office without questioning for many years.” The resulting “mischievous practice” of soaking and pouncing, he argued, rested on a legal fiction: that the mere showing and description of an invention in a pending application constituted a constructive reduction to practice, even if the applicant never bothered to claim it until years later.
Synnestvedt’s vivid rhetoric did not win the day. The Supreme Court reversed the Court of Appeals and held that the statute permitted the Chapmans a full two years to file their divisional application after the Wintroath patent issued, and no additional laches defense could be applied to shorten that period. Relying on United States v. American Bell Telephone Co., 167 U.S. 224 (1897), the Court declared that a party seeking rights under the patent statutes “may avail himself of all their provisions, and the courts may not deny him the benefit of a single one.” These are questions “not of natural but of purely statutory right” that no court should disregard “on the ground that in its judgment they were unwise or prejudicial to the interests of the public.”
The fate of the most notorious important patent delayed for the most years with prosecutions laches was never even decided on those grounds. The many years George Seldon kept his patent application pending broadly claiming gasoline powered automobiles.
Right – I was looking in the records and so far have not found a cute pejorative like submarine or soak-and-pounce used against Selden.
For another clever pejorative, there is the CAFC decision years ago blessing writing claims “from the catbird seat.” I.e., adding or amending claims in a pending application to cover the subsequently observed commercial products of others. But your finding of a more than century old “soak and pounce” term is even better.
P.S. Your immediately prior blog does a fine job of explaining why there is not really any present-day U.S. statutory limit to keeping applications pending and claim-amendable for life. That is, just the 20 years [+ PTO delays] limitation, which is now applicable to almost every one, and their continuations and divisionals, other than those very old Hyatt applications.