Patent Enforcement Delay Now May Be Fatal Error

Jerome Lemelson, who died in 1997, was a prolific inventor, second only to Thomas Edison (and Lemelson still has patents pending at the Patent Office). A number of the Lemelson patents, though, are what are called “submarine” patents, patents that a patentee keeps in the application phase for years by filing continuation applications, amending claims over time to more closely describe evolving technology, and allowing the patent to finally issue after the technology has matured and the patent rights will be more lucrative. Since patent applications used to be kept secret indefinitely, there was also no way of knowing whether a patent application had been filed until the patent was actually issued, so there was also no way to avoid infringement.

Lemelson's particular field was bar codes and machine vision. In the case of the Nevada suit, the patents issued between 18 and 39 years after the filing of the original application. Over the years, the Lemelson Foundation has collected $1.5 billion in licensing fees from almost a thousand licensees, who found it less expensive to pay a fee than engage in expensive litigation to challenge the validity of the patents.