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Submarine Patents Alive and Well: Tivo Patents DVR Scheduling


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: February 19, 2010 @ 2:46 pm
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Earlier this week, on Tuesday, February 16, 2010, TiVo, Inc. (NASDAQ: TIVO) was granted US Patent No. 7,665,111, titled Data storage management and scheduling system.  This patent is indicative of what I suspect will become a growing problem in the years to come, which is a resurgence in so-called submarine patents.  This patent matured from a patent application filed on October 20, 1999, which means it was pending at the United States Patent and Trademark Office for over 10 years.  Amazingly, according to the Patent Office no patent term extension is owed.  Exactly how can a patent remain pending for over 10 years and not be entitled to an extension in the term?  I really don’t know to be perfectly honest, but it seems that this patent will apply to pretty much any and all DVRs currently on the market, so even if there is no patent term extension granted it could produce a choke-hold on the industry through October 20, 2019, which should create a tidy sum of royalty payments for TiVo, at least over the near term.  Of course, it will also spark a rush to innovate around the TiVo patent, thereby causing innovation to march forward, much to the chagrin of anti-patent advocates who are already proclaiming this patent to be evidence that patents harm innovation.   In any event, a patent that issues after 10+ years suggests problems, even if the intended march of innovation is encouraged, which will of course be the case.

The term “submarine patent” generally relates to a patent that has been pending an extremely long time and then pops up without notice, typically after the industry had long ago adopted the technology.  This was famously exploited by Jerome Lemelson, widely regarded as a hero to independent inventors and entrepreneurs, and widely viewed as a villain by large corporations.  According to Scientific American, Lemelson was “the unrivaled king of the submarine patent.”  Submarine patents were thought to be a thing of the past since utility patent applications filed in the United States or or after November 29, 2000 are published, as a general rule, 18 months after the earliest filing date.  Unfortunately for the industry, this TiVo patent was filed October 20, 1999, over 1 year before the change in US law.  On top of that, it is still possible to opt out of publication if the applicant waives foreign filing rights.  In the situation where protection is likely only available in the US waiving foreign filing rights can be worthwhile indeed, and does still happen.

Submarine patents are not ever likely going to be the problem that they once were prior to the publication of patent applications at 18 months and prior to the change in patent term.  On June 8, 1995 the term for a US patent changed from 17 years from issuance to 20 years from filing.  There is still an opportunity to obtain additional patent term, for example where the Patent Office interjects unnecessary delay into the process, but it is unrealistic to think that patents will remain pending unknown for decades, which was frequently possible and how Lemelson masterfully manipulated the system, within the rules of course.  But the TiVo patent was pending for a decade, unknown and secret.  That should not be able to happen and should justifiably cause an alarm to sound within the Patent Office, within Congress and within the high-tech, particularly the software, industry.

According to Public PAIR, the first time the Patent Office substantively reviewed the TiVo patent application was in June of 2004, issuing a non-final rejection on June 28, 2004, which was subsequently mailed on July 7, 2004.  What this means is that for nearly 5 years the TiVo patent application remained dormant at the Patent Office, which should be unacceptable by any standards.  Subsequent to this there were a string of final rejections, followed by the almost obligatory Request for Continued Examination, known simply as RCEs.  Throughout the history of the pendency of the application there were numerous Information Disclosure Statements filed, which likely did nothing to speed the case up, that is for sure.  Of course, if you do not have a pending patent application you don’t have to file an Information Disclosure Statement, so the longer the case goes on the more the applicant will learn, so it is hardly surprising to see multiple Information Disclosure Statements, particularly if TiVo knew, as they must have, that this patent could be revolutionary, at least in terms of industry adoption.

For a long time we have known that the US Patent Office has an almost hopeless backlog.  I have been incredibly critical of previous administrations, and while the temptation will be for many outside the industry to throw stones at the Patent Office.  I am, however, reminded of a time when I was a new, young, wet-behind-the-ears attorney in New Hampshire.  I was sent to do a hearing in a case by a senior partner.  Upon arriving and making my arguments the judge looked at me and asked “when did you get this file?”  To which I responded “3pm yesterday afternoon.”  The Judge then proceeded to turn to the court reporter and say “let the record reflect that what I am about to yell at Attorney Quinn is directed not at Attorney Quinn, but rather at Attorney…”  In that same vein, let the record reflect that what I am about to say is not directed at the Kappos PTO Administration.  The Kappos PTO Administration is doing the best they can given extremely difficult circumstances.

How can this happen?  How can this be allowed to happen?  This is not just a problem for the Bush era USPTO, but rather a problem for Congress who ostensibly is supposed to be watching over the government.  Congress appropriates the budget and is supposed to exercise oversight, and by all accounts the USPTO is barely functional, has an IT infrastructure that is embarrassingly bad, doesn’t have the financial resources to do what they are required to do, is losing patent examiners at a rate of about 40 per month and, oh by the way, has a backlog of well over 1,000,000 patent applications.  Can someone in Washington DC, preferably someone on Capitol Hill, step forward and try and fix this mess?  PLEASE?!?!?!?

There is a theory I have heard by some that goes like this.  Since US patent applications have been published the public is getting their end of the bargain (i.e., disclosure in a timely fashion) so there is no urgency to address in a responsible way the USPTO backlog.  Those being hurt by the USPTO backlog are just independent inventors, entrepreneurs and small businesses.  You know, the folks that actually innovate.  But the public is not being harmed, and in fact is getting the benefit of disseminated patent applications earlier than ever, many of which will be abandoned without any exclusive rights ever attaching because the process takes so long; unnecessarily long.  This is absurd!

The aforementioned theory proceeds to conclude that if and when submarine patents start to emerge that affect large businesses and consumers then perhaps Congress will start to get an earful and action will be forth coming.  Of course, with early publication the thought that submarine patents would emerge seemed fanciful, or at least a long shot.  Well, now we have a verifiable submarine patent, and one that seems likely to cause enormous havoc on the industry.  This is good news for those who own stock in TiVo, and eventually will be good news as those in the industry scramble to innovate around the TiVo patent.  So in the future look for more advances in DVR technology that make it unnecessary to pay TiVo royalties, which will cause the technology to leap forward and benefit consumers.  In the meantime, however, allow me to notice that this is hardly an example of the patent system working properly.

Perhaps now those in DC will stand up and take notice, which would be a very good thing indeed.  While this TiVo matter will pass, something needs to be done to help independent inventors, entrepreneurs and small businesses.  You know, the ones overwhelmingly responsible for employing American workers.  With extraordinary delays at the Patent Office no one wins, technologies get disclosed and never pursued; being abandoned along with the potential for new jobs and a growing economy.  It is sickening how simple it would be for our leaders to spur the economy, and yet they continue to pursue failed policies after failed policies.  For crying out loud, the engine that could lead us out of this mess is the US Patent Office and their own IT systems are so inferior it they are described as “embarrassing” by the Preside and by Director Kappos.  Shame on everyone who has created this problem, and shame on everyone who stands in the way of the Patent Office fueling a great recovery.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patents, Technology & Innovation, US Economy, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

 


17 comments
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  1. Perhaps a new name should be coined for this – as this is not a “submarine PATENT” as the patent itself is brand new and has not been submerged and lieing in wait.

    Unintended-consequence-of-a-patent-office-gone-bad-and-not-processing-patent-applications-in-a-timely-manner is just a bit too unwieldy.

    Give for the moment that this patent is deserved, and that AT THE TIME OF APPLICATION this was indeed a novel and non-obvious advance, is the applicant at all to blame?

    To keep with the miltary theme, how about Patent Office Landmine?

  2. Gene,

    You write:
    “It is sickening how simple it would be for our leaders to spur the economy, and yet they continue to pursue failed policies after failed policies. For crying out loud, …”

    But really. You shouldn’t blame them. They went to school, got good grades, and swallowed up what their teachers teached (sic) them with hook, sinker, line and hot air float included. The world is a complicated mess. It all starts with some teacher convincing some hapless student that economics is a “science” (albeit, a dismal one –yeah right; there’s a good excuse) and if the student doesn’t agree, he/she fails.

  3. why stop at economics – the same rationale applies to any subject – including law

  4. The lack of patent term extension stems from the filing date–it falls between June 8, 1995 and May 28, 2000, and so is only eligible for patent term extension under former 154(b).

    http://www.uspto.gov/web/offices/pac/mpep/documents/2700_2720.htm#sect2720

  5. Thank you. This patent yet again shows that the PTO is still sitting to an unknown extent on a truly inexcusably delayed backlog of “submarine” or “surprise” applications so old that they were filed before the November 29, 2000 effective date of the patent law reform providing publication of more than 90% of subsequent patent applications. [To prevent secret pendency for years before a submarine patent surfaces, although it is still possible to opt out of publication by waiving all foreign filing rights.]

    Worse, what if [as seems likely, and has never been denied by the PTO] the PTO still has pending submarine applications filed before the prior June 8, 1995 patent law reform effective date? These can get patent terms running 17 years from their eventual issuance, more than 32 years from their filing date! [Someone should do a freedom of information request to expose that.]

    The PTO by now should not have that many such very old applications pending from before the U.S. patent law reforms, and it seems inexcusable that special attention is not being given to their issuances or other disposals by the Group Directors and other PTO managers. Where appropriate, the law is now clear that the PTO could and should be issuing rejections (or at least “show cause” orders under Rule 105) for “prosecution laches” for unexcused repeated serial continuations. However, most of these inexcusable delays are due to PTO management allowing examiners to avoid working on important old applications in favor of far later applications easier to get work credits for, and not reassigning such applications to examiners who will properly handle them, with proper credits. Just as with the inexcusable PTO delays for years of important reexaminations, mere reassignment of just a small number of dedicated PTO examiners could easily address the relatively small number of such grossly delayed PTO examinations.

  6. USPTO Pair shows:
    Child Continuity Data
    PCT/US00/06473 filed on 03-09-2000 which is Published claims the benefit of 09/422,121

    PCT child application was published ??
    Was floating on the surface ?

  7. Not much of a submarine…its sailing out in the wide open!
    Family related WO 0059233 published 2000-10-05

    Do your homework next time.

  8. IPBloke-

    That doesn’t look like a US publication number.

    It doesn’t change the fact that it was filed in 1999 and issued in 2010, does it? Oh, silly me, the answer is NO. Answered my own question did I.

    -Gene

  9. [...] after filing, sometimes much longer, as in the case of the recently issued TiVo patent that was issued more than 10 years after it was filed.  On top of that, to keep a patent in force you need to make additional payments over the course [...]

  10. No kidding, you are silly. It not a US Pub…so what? The public can read the specification and is forewarned – there is no submarine issue here.

    But if you want a US Pub try on 20030037333 it is a CIP of the application 09/422121 (which issued as the above patent). It was published on Feb 20, 2003.

  11. IPBloke-

    Of course there is a submarine issue here. You can choose to keep your head in the sand if you like, but even if there are publications from 7 to 10 years prior to when the patent pops out that would not cut off a submarine issue, and you either know that or should know it.

    In order for you to logically say there is no submarine issue you would have to then also conclude that once an application publishes then you should stay away from that technology for the potential term of the potentially issued patent. That is absurd. The Patent Office strings out prosecution for over a decade and then a patent issues. That is a problem whether you are willing to acknowledge it or not. This sort of thing should not be possible, but it is and that is a problem for the Patent Office and a big problem for industry. Just imagine this patent being issued to a patent troll rather than an industry player. The entire industry could be held for ransom, all because the USPTO took over 10 years to issue the patent.

    -Gene

  12. Please use different nomenclature than “submarine”. Such use will cause confusion with the historical “submarining” that has been curtailed by the switch in term.

    Patent Office Landmine, if you please. (This also highlights culpability better).

  13. [...] 16, 2010, which seemingly grants them extremely broad patent protection over DVR scheduling. See Submarine Patents Alive and Well: Tivo Patents DVR Scheduling. I should have pulled the trigger, and I know it. I knew that the ‘111 patent was a good get, [...]

  14. Reading the actual patent claims, I don’t think things are as simple as you’re saying. Claim 1 includes not just prioritized season passes to decide what to record, but ALSO “inferred preferred program selections” (e.g. suggestions, don’t you love lawyers?) which Yup, seems like if you don’t do suggestions you’re off the hook.

    So either the lawyer didn’t know what he was doing and should have broken out the filing so that the suggestions were part of a separate claim OR the patent office found prior art or considered it too obvious if you didn’t include suggestions…

    My take is that any DVR which does NOT record suggestions is off the hook, even if it uses an ordered list to decide on what to record. And of course you could always come up with some other way of resolving conflicts–record the one that isn’t showing at a different time this week, record the one that was requested first by date, request the user to resolve any conflicts, or whatever, as well, e.g. something other than a prioritized list as a way to figure that out.

  15. Well if you consider the patent office’s performance to be sub-stand for a 11 year weight, the judicial system is another monkey in the zoo having soon held this case and company in limbo for 7 years. A fine display of American wisdom and efficiency. The same that makes citizens despise lawyers.

  16. “Worse, what if [as seems likely, and has never been denied by the PTO] the PTO still has pending submarine applications filed before the prior June 8, 1995 patent law reform effective date? These can get patent terms running 17 years from their eventual issuance, more than 32 years from their filing date! [Someone should do a freedom of information request to expose that.]”
    Indeed, see this for an example:
    http://holmansbiotechipblog.blogspot.com/2010/06/biogen-launches-submarine-patent.html

  17. Yuhong-

    I approved your comment this time, but quoting others and providing a link without discussion is not the type of commenting allowed on IPWatchdog. In the future please substantively contribute or refrain from commenting.

    A link is fine, but a link without substantively forwarding the debate is not.

    -Gene

    Sent from iPhone

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