InventorEd Presents:

Louis J. Hoffman about Jerome H Lemelson's Patents

and the Submarine Patent Myth

-----Original Message-----
From: Louis Hoffman <ljhoffman@patentit.com>
To: Multiple recipients of list <patent-l@ftplaw.wuacc.edu>
Date: Thursday, November 14, 1996 12:11 PM
Subject: Alleged sub pats and Lemelson

Alleged sub pats and Lemelson
I offer another perspective on so-called "submarine patents" and Jerry
Lemelson, in response to some of Robert P. Bell's comments. This is a personal perspective from a lawyer who represents Jerry L, and does not (necessarily) represent the position of my client.

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
myths are not perpetuated to newcomers.
----
Re "SUBMARINE PATENTS"---

Bob writes:  "A 'submarine patent' describes a patent application filed very early on, describing basically science fiction ideas....You can make up something in your head and get a patent on it."

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
distinction between (1) writing claims in a pending app to read on a product and (2) intentionally delaying prosecution of an app so that you
might be able to write such claims later.  The proposed "practice" of submarining is the latter, and that is what inventors like Ron Riley and former Commissioner Banner say is essentially non-existent.

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.  Congratulations, Bob!
------
Re Jerry Lemelson and his patents...

Bob apparently had some limited involvement representing a Lemelson opponent, but he doesn't really know what went on in the "machine vision" patent prosecution.  I wrote a lengthy message last year detailing the sequence and challenging patent attys to say what, if anything, they would have done differently in the prosecution.  The subject got changed.

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 ultimately found
that the examiner was wrong, but only in 1976.  So, the examiner entered a 7-way restriction requirement, requiring divisional cases.  Subsequent cases were subdivided.

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
cases, and that it is hoped that they "read on" commercial embodiments.  But the delay was not L's fault, and he had no plot to defer wealth from his 30s into his 70s.  He was just lucky that the PTO delay worked to his advantage, as opposed to the technology passing him by.  For many inventors, justice delayed can be justice denied.

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
was not L's fault, the PTO's delay will not have harmed L too.  Fortunately, recent precedent on the "laches" theory--notably a decision by the PTO Board and one by the NDCal in Summer 96--appears to be trending against Ford's laches defense.

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
to notice that the larger companies paid quite handsome sums.  I submit that this is a testament to the value of L's contribution, and that L is not a "strike suit artist," as Bob's comments might lead one to conclude.

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
anyone with enough money and persistence can get 500 patents, and that L's particular 500 patents are just 500 pieces of junk.
------

I would ask all members of the group, in dealing with Lemelson or the issue of whether we should change the patent law (or maintain the existing changes), to keep the discussion on an intellectually honest level, without the absolutism such as displayed in Bob's message and those of others.

--Louis J. Hoffman

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