Patent It Yourself - PDF Archive

426 | Patent it YOURSELF
Patent Trolls and Submarine Patents
You may have heard of the terms “patent troll” and
“submarine patent” recently. What do these terms mean
and how do they affect inventors?
As well defined by Wikipedia, “patent troll” is “a
pejorative term for a person or company that enforces
its patents against one or more alleged infringers in a
manner considered unduly aggressive or opportunistic,
often with no intention to manufacture or market
the patented invention. Less pejorative synonyms are
nonpracticing entity, patent assertion company, nonmanufacturing
patentee, patent marketer, and patent
dealer, which describe a patent owner who does not
manufacture or use the patented invention. Under the
U.S. and most other patent systems, patentees are not
required to—and feel that their rights should not be
lessened if they don’t—practice their inventions. Many
inventors are very creative but are not business oriented
and would like their creativity rewarded fully even if they
don’t commercialize their inventions. Thus if you have
a patent but don’t practice the invention, I suggest you
consider yourself no less worthy than a patentee who
manufactures the patented invention.
Wikipedia defines the related term “submarine patent”
as “a patent first published and granted long after the
initial application was filed… . [I]t stays under water … for
long periods, then emerges … and surprises the relevant
market.” I believe that few, if any, submarine patents
ever issued. However under present U.S. law, where
supplemental cases (divisions, continuations, and CIPs)
expire 20 years from the date of the original application,
any patent that is significantly delayed by being a
supplemental case will have a much shorter in-force
period. If you obtain a patent after delay due to one or
more supplemental cases, I similarly suggest you consider
your patent no less worthy than a patent which issued
directly from the first filing.
Remember that in both situations (patent troll and
submarine patent), any relevant patent already covers
a significant advance in the art since it issued only
after the PTO found that the claims defined a useful,
novel, and unobvious invention. Remember also that
the U.S.’s greatness is due in large part to the creativity
and contributions of independent inventors. I favor not
abridging their rights if they choose not to engage in
business activity.
If You Discover an Infringement
During Pendency
You may recover a reasonable royalty for an infringement
during the pendency of your application, but you must
wait until the patent issues to sue for such royalties and
the royalty will only be applicable to infringements that
occur after the publication of the application. You must
also notify the infringer of the published patent application
(PubPA) and the infringing device or process must
be substantially identical to the invention as claimed in
the PubPA. (35 USC 154(d).) The royalty you receive will
be applicable to any infringements that occur after the
publication of the application.
If you filed a Nonpublication Request, you should
rescind it in order to have your application published
so that you can take advantage of this “royalties before
issuance” statute. If you discover the infringement well
before the normal 18-month-after-filing publication date,
you may request that the application be published earlier
than 18 months by requesting same and paying the
publication fee. (Rule 219 (37 CFR 01.219).)
K. Product Clearance
(Can I Legally Copy or Make That?)
This is the other side of the coin: Here I’ll assume that, instead
of having your own invention, you’re interested in copying
the invention or product of someone else or making a new
product that you feel may be covered by someone else’s
patent. What can you legally do and how do you find out?
1. Common Misconceptions
Before giving you the applicable rules and information, first
I want to dispel some widespread misconceptions so you’ll
start from neutral territory.
Common Misconception: If you make an identical copy of a
device or circuit, you can be validly sued for infringement,
even if the copied device is not patented.
Fact: You are free to copy any device or circuit, even to the
minutest detail, so long as you do not infringe any applicable
patent, trademark, or copyright, and so long as you don’t
copy any features that have a “secondary meaning.”