Buried Patent Treasures to Emerge

Stephanie A. Weiss

In May 2002, the US Patent and Trademark Office will reveal information that it once kept secret.

That date is 18 months after new patent laws took effect, requiring the government to publish most patent applications 18 months after their first filing, regardless of whether a patent has been issued.

Under the new law, "you can see what your competitors have filed," said Thomas J. Engellenner, a partner in the patent law firm of Nutter, McClennen & Fish LLP in Boston. "Even if you can't predict with absolute certainty what their claims are going to be, you can read what they've disclosed."

Before November 2000, the patent process guaranteed inventors secrecy until a patent was issued. If the patent office refused to award a patent, the inventor could withdraw or revise the application without giving up the secret.

With the typical American patent process taking about three years, publication after 18 months could give companies a year-and-a-half head start on understanding what their competitors are planning.

"But the other provision of the new law is that, once your patent publishes, you can collect damages on those claims from date of publication if they are allowed," Engellenner said. "So, yes, your competitor is finding out things that they might not otherwise find out. ... But, by publishing, you're protected."

Outside of the US, this pregrant publishing is the norm, so the regulation has produced little outcry.

"More and more American companies are filing abroad, so their patent applications are being published anyway," Engellenner said. "They don't have a lot to hide at the 18-month mark anymore."

Engellenner said the new publication rules won't stop so-called "submarine patents," which an inventor files with a few claims and then revises to include many more new technologies. One example is the machine vision patents that Jerome Lemelson filed in the 1950s and '60s and then revised in secret until their approval in the '80s and '90s, when vision-based inspection had become widespread.

The new law would not require the patent office to republish the claims upon revision, but another recent patent law revision makes a Lemelson repeat unlikely. Instead of protecting technology for 17 years after the date of issue, patents now protect technology for 20 years from the filing date.