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AIPLA President's blog: A submarine attack on submarines

If you are in the IP space then you know about the America Invents Act (AIA), the significant US patent law reform that occurred in 2011

What people do not often realize is that after any legislation is passed, there are typographical errors or other mistakes that Congress has to fix. This is done in a so-called “technical corrections” bill, one that is not meant to be substantive legislation. Rather than change the law, such a bill conforms it to what Congress intended to enact. When the Technical Corrections Bill for AIA came up a few weeks ago, however, it contained a significant surprise.

To understand the surprise, let me go back to when I started practicing patent law (no, it’s not as far back as mandatory quill pens and ink wells). Until the mid-1990s, applications were confidential until the patent issued, and a patent lasted for 17 years from the date it issued, regardless of how long the underlying application (or string of applications) was pending. That dynamic led to so-called “submarine patents,” application strings that were secretly pending in the Patent Office for years or decades while the applicants modified claims to explicitly cover advancing technology that would then “surface” as a patent and be asserted against the new technology.

That changed in 1994, however, when US patent law was brought into conformity with other countries under the General Agreement of Tariff and Trade (known as “GATT”) based upon negotiations that occurred in Uruguay. (It is simply a coincidence that this legislation relates to negotiations in Uruguay, it has nothing to do with my recent trip there for AIPLA). The 1994 Congress enacted the Uruguay Round Agreements Act (URAA), modifying confidentiality provisions to require that most applications be published after 18 months. The URAA also changed patent terms so that all new patents expired 20 years from the earliest application date regardless of how long the string of applications had been pending. (There are certain extensions and adjustments on the 20 years available but those are not relevant for this discussion, although one is addressed in the Technical Corrections Bill). Naturally, there was an avalanche of applications filed just before the effective date of the patent term change (June 8, 1995). While the vast majority of those applications are finished, believe it or not, some 1995 pre-URAA applications are still pending (one blogger claims there are 216 such applications).

This all sets up the hullabaloo over the AIA Technical Corrections Bill. Without fanfare, the House bill, as introduced, included section 1(m) requiring that all pre-URAA applications be resolved within one year of the Technical Corrections Bill effective date or lose their 17-year pre-URAA patent term. The Technical Corrections Bill contained 13 other major provisions, most of which were not controversial (there were other more controversial “corrections” – such as the scope of certain estoppel provisions – that did not make it into the Technical Corrections Bill), but section 1(m) made my phone ring.

Let’s stop for a moment to realize that we are talking about applications that are almost as old as my son who's in college. Everyone’s first reaction, it seems, is that it is outrageous for 1995 applications to still be pending. But, after a moment people realized that for some applications there may be legitimate reasons why they are still pending. For instance, the government has the ability to suspend any application based upon national security grounds (see 35 U.S.C. 181). There are other reasons for an application – and even related applications – to have their prosecution suspended if they involved in a proceeding such as an appeal, interference or reexamination (see, for example, 37 CFR 1.931 and 1.989; MPEP §1449.01, 2283 (II), 2307.03, and 2686). The proponents of section 1(m), however, are concerned about applicants still pursing a submarine strategy. (For instance, the Federal Circuit’s opinion last year in Hyatt v Kappos indicates the possibility.)

AIPLA asked its special Legislative Committee to consider the bill, and I put the issue on the agenda for AIPLA’s Board of Directors. On December 12th, the AIPLA Board voted to not endorse section 1(m) as written, but instead to support the concept of a study to see if pre-URAA applications really are a problem.

On December 18, the House passed the Technical Corrections Bill (HR 6621) but with section 1(m) changed to only require a PTO-study of the pre-URAA application issue and not a change to the expiration dates. Each time I have tried to finish this post, however, further changes to the Technical Corrections Bill have been made. On December 28th, the Senate took up HR 6621 and passed it, but without any requirements specific to the pre-URAA applications; in other words, without the study requirement

On the night of January 1, 2013, the House passed HR 6621 without any reference to the pre-URAA applications – either study or deadline – shortly after passing the ‘fiscal cliff’ legislation. It was received by the White House on January 3, 2013, which makes January 15 the last day for it to be signed or not. Now it awaits Presidential Action.

Stay tuned, it’s always something with the legislative process.

And, of course, thanks for reading.


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