The Cutting Edge: Computing / Technology / Innovation : INTELLECTUAL PROPERTIES : Critics Take Aim at ‘Submarine Patent’ Amendments

In warfare, submarines can pick off enemy ships with torpedoes that can seem to come from nowhere. In the intellectual property arena, “submarine patents” can have the same effect on technology industries--at least according to a chorus of critics.

Submarine patents are those that are kept pending for years. The applicants watch the related industry’s development and then attempt to amend the original applications to cover technology that may not have existed at the time of the filing. Because U.S. law allows such changes while a patent application is pending, an opening for exploitation exists, at least in the view of the critics.

Submarine patents are typically granted long after their original filing dates. The term for protection of “utility” patents is 17 years, but a good patent lawyer can extend that for several more--even decades--by amending the original application before the patent is approved. Only then would the 17-year clock start ticking.

“That way, they can claim patents on technology that wasn’t claimed--or even developed--when the original patent was filed,” said Breton A. Bocchieri, a partner with the Century City law firm Poms, Smith, Lande & Rose, which specializes in intellectual property issues.

In one case, a Missouri patent lawyer sued the entire U.S. hard-disk-drive industry over the rights to a type of carbon coating used on magnetic disks. The original patent application was for a different kind of coating, according to Bocchieri, who represented one of the disk drive companies, but it had been amended years later to include the carbon coating technology. In settling the case after a victory at the trial level, the defendant disk drive firms acquired the patents and left them open for public use.

Patents, always a strong form of legal protection for inventors and owners of intellectual property, have recently become more formidable. More and more disputes about patent infringement are going to trial, often commanding hefty monetary awards in their adjudication.

Moreover, the cost of defending against a patent lawsuit can run to millions of dollars.

The problem lies in distinguishing between “pioneer” patents--on the inventions of visionaries who come up with great ideas that an industry later adopts--and submarine patents, which can actually retard innovation.

The dangers of submarine patents have prompted action by Bruce A. Lehman, head of the U.S. Patent and Trademark Office. He proposes to put a 20-year limit on the application process and better educate patent office examiners in high-technology fields such as computers and semiconductors.