Talk:Patent ambush

Not a submarine?

Is there any reason why an undisclosed, non-public continuing application would not be considered a submarine? bd2412 T 11:43, 14 December 2008 (UTC)

Let me first understand this. In the U.S., if you file a continuation application of a pending, already published application, can you somehow keep the continuation non-published? I thought that continuations were automatically published (within a month or so) if the parent application had been already published. Am I wrong? It would be good to expand the article Continuing patent application on this point (when are continuations - and cip - published?).--Edcolins (talk) 11:57, 14 December 2008 (UTC)

Well bear in mind, the 18-month window for making an application public only applies if the patentee intends to file foreign applications pursuant to the U.S. filing. If the U.S. patentee is willing to give up foreign filing rights, the application itself, including all continuations or divisional applications, will remain undisclosed until the patent is granted (which may be years after it was filed). In any event, the 18 months, in the world of computer technology patents, is an industry lifetime. In Rambus, the patent owner was clearly using continuing applications as a means to conform the claims of its submerged patent to the standard being adopted. In the end, it did so quite successfully. Of course, with a patent ambush, the primary issue is that the patent was undisclosed, rather than altogether hidden. But as a practical matter, the industry players will look for each others patents to avoid exactly that situation, and can be most effectively ambushed with a submarine, that is, with a patent that is still in process, still undisclosed, and being stealthily amended to claim exactly what the standard being adopted locks the standard-setters into. bd2412 T 13:10, 14 December 2008 (UTC)

Good point. Although you have to request non-publication; it's not automatic even if you don't file foreign cases. Also, the 20-years-from-filing term of the patent means that long-term submarining is no longer possible past 20 years. In general, "submarine patent" is more or less disappearing as an issue (or at least becoming exceptionally rare), but the term continues to receive disproportionate exposure.

That being said, I think we may be confusing things here. As I understand it, RAMBUS concerned pre-2000 amendment patents, meaning they were unpublished until grant -which is no longer the case. As such, issues of publication surrounding this case are not relevant in today's vastly different legal context.

To answer Edcolins' question, you are correct. If the first application was published you cannot keep the continuation unpublished. J y p (talk) 16:45, 2 February 2018 (UTC)