Review by Phillip Vales of Patent CEO::
The so-called Submarine patents are not what you would think, i.e., an invention being patented in the technical field related to devices that travel under the ocean blue. On the contrary, submarine patents are patents that issued from applications that are held back by tactical strategies of the filers and corporations in order to get a legal or financial benefit at some point down the line. In other words, somehow or other patent filers or their legal representation use sophisticated claim drafting and or argumentation to purposefully delay an applications prosecution history. This with the hope that other market participants will develop similar technology resulting in a patent royalty fee bonanza somewhere at the end of the line.
A typical example of this problem happened a few years back dealing with the issuance of US Patent 7665111 for data storage. The patent was originally filed in October of 1999 and it was continued over and over again until it was finally granted eleven years later. So much for expediting the process! It was first examined back in 2004 and received numerous continuations and their expected followup request for continuations (RCE). However, this all clearly shows how the patent system as a whole is backlogged and how patents can submerge and resurface only to cause problems for corporations and other inventors many years later.
The patent apparently covered various forms of DVR tech that garnered TiVo some serious royalty lucre. Additionally, a positive result of all this will be a rapid rise in technical workarounds to avoid paying the piper yielding various novelties that thereby promote the technical arts. Thus, the reaction to the submersible torpedo suddenly exploding does have its good points; however, it does not solve the endemic problem within the USPTO itself. That is: how can a patent be floating around the patent office for so long without being finalized and either taken to court or caused to be abandoned by effective examination on the merits of the application.
The TiVo patent laid in waiting at the bottom of the corporate ocean and certain safeguards to knowing the existence of the rights to a technology were simply not available. You see patent applications are normally published eighteen months from filing. However, one can get out of this rule if one waives foreign rights and with a combination of docketing backlogs and prosecution delays a concept can lay in wait for unsuspecting victims far into the future. Whilst old time submariners familiar to the USPTO were able to manipulate the system in order to gain economic advantages, this should not be happening in a modern examination process that an application is alive after more then a decade in the system.
The extraordinary delays clearly visible in the patent system are evident not only in the general practice of ordinary patents but also in the so-called prioritized examination system. Supposedly if you pay anywhere from 1k or 2k or more to expedite the process you are supposed to get either or an allowance or final rejection within a year. Thus, you should have received at least two actions on the merits of your application. However, the patent office is notorious in missing its own internal deadlines; exacerbating this problem is the number of hands that touch an application as it gets to its final destination of the patent examiner. Only time will tell if the USPTO can improve and grow beyond its institutional limitations and bureaucratic past.