Louis J. Hoffman about Jerome H Lemelson's Patents
and the Submarine Patent Myth
Alleged sub pats and
A thorough exchange on
this subject took place a year ago. But a few
comments by Bob justify response or amplification, in my
view, so that
The patent law requires that you submit a disclosure that is "enabled," that is, that it teaches one how to make and use an invention. 35 USC 112(1). This may be done on paper only, and the invention need not be built, true. Also true is Bob's comment that "The PTO _does_ slip up once in a while." But the patent law does not have a "loophole" in it permitting "science fiction" ideas to become patents regularly, as the myth of the submarine patent would have it.
Bob also writes: "During the 'good old days' of the patent business, you could keep a patent application alive indefinitely by filing continuations, divisionals, and FWCs. The idea of a submarine patent is to wait until _someone else_ actually develops the technology, and then draft claims which _read on_ their product."
Strictly speaking, Bob's first sentence is right. However, the implication of this part of the submarine patent myth is that that the inventor can keep an application on file indefinitely. Actually, the PTO has successfully blocked various efforts to refile apps without substantive prosecution. Thus, refilings occur only if the inventor actually has some substantive prosecution to do. In other words, patents issue after long delay typically because of delay or obstinance or actions by patent office, not inventor fault. For example, divisionals can be filed only if the PTO enters a restriction requirement, dividing an app into pieces.
Bob also refers to the
practice of writing claims that "read on" a
competitor's product, which he says he has done. He
offers that as proof that submarines exist, because he
has done it. There is a critical
I doubt that Bob has filed papers in the PTO solely for the purpose of intentional delay to collect money from competitors. If he says he has, I would support disciplinary sanctions against him under 37 CFR 10.85(a)(1).
Switching back to "delayed patents," Bob writes: "Now, why are some against the so-called "submarine patent"? The patent system was supposed to reward inventors for their _useful contributions_ (the "useful arts" clause). In return for a limited monopoly, the inventor _discloses to the public_ his invention. It is an _exchange_, not a _grant_. The patent submariner does not disclose _anything_ to the public until the public has been lead to believe it is _public domain_. Then "surprise!".... By writing only "paper" inventions, the patent submariner does not contribute to technology - only feeds off it."
This might be a persuasive argument against permitting inventor-caused delay, particularly in those cases where the specification is not disclosed in a first patent. However, the argument is not persuasive as to: (1) cases in which a first patent issues from an original app, thereby publishing the invention, and continuations issue much later with additional claims, (2) cases in which the PTO caused the delay (why should the inventor be punished who *tried* to "make the exchange" in a more timely fashion?), or (3) cases in which the invention was built or even was a "paper" one that is a "real" one (which tells the artisan how to make and use the invention), as opposed to a "mistake by the PTO."
I submit that the 200 instances identified by the Commissioner of patents that issued after long delay (two thirds of which were subject to gov't imposed secrecy orders) fall into one or more of those three categories.
Finally, Bob writes: "Moreover, Corporations hate solo inventor submarines as they can do little to defend against them. The solo inventor has no competing product that might infringe one of the corporation's 'depth charge' patents. All you can do is pay - either the solo inventor, or your defense attorney."
This, in my view, is
absolutely true, and is the real genesis of the
"submarine wars" going on.
In sum: A first
"machine vision" patent was published (thereby
meeting the "exchange") in 1963, but a reticent
examiner prevented issuance of additional claims, and L
was required to appeal twice to the Board of
Appeals. After taking its own sweet time, the Board
Regarding the spec, it is extremely detailed (down to the gate level), and it is not filled with "I want to make an interstellar rocket ship" verbiage. This is a "real" invention, and is actually amazing when understood that L would have come up with the concepts in the 50s.
There is no question that
L's lawyers wrote additional claims in the later
In short, Bob's suggestion that L is a clever (but admittedly legal and not immoral) manipulator of the system is not accurate. L just played the hand that the PTO dealt him.
And, if Ford succeeds in
invalidating L's patents because of delay that
Bob also writes that many
companies settled w/L for low royalties, in amounts that
would not have justified a lawsuit. L has licensed
100 companies of a range of sizes, with royalties
totalling hundreds of millions of dollars. Simple
division should cause the perceptive reader
Bob next writes, "I do take exception, however, to the orchestrated campaign to sanitize his reputation and characterize him as one of the greatest "inventors" of the 20th century."
I submit that there has been an orchestrated campaign to *discredit* L in recent years. The "submarine patent" idea was invented by Japanese litigation opponents, and American companies like Ford have "run with it." L is repeatedly offered as the "poster boy" of submarining.
The facts are that L has 500 US patents, more than anyone except Thomas Edison and Edwin Land. Many of his patents are on very important technology, such as used in factory automation, camcorders, fax machines, and the Sony Walkman. I don't know if L is "one of the greatest inventors of the 20th century," but it is undeniable that he is one of the most prolific.
I will take exception,
though, to those who would argue or suggest that
--Louis J. Hoffman