American Inventors Protection Act of 1999 (AIPA), Pub. L. No. 106-113, amended by Intellectual Property and High Technology Technical Amendments Act of 2002, Pub. L. No. 107-273.
Over the years, companies have complained about problems caused by “submarine patents.” The basic scenario is that a patent applicant allows its application to languish in the PTO while watching another company make substantial investments in a technology or product that will infringe the yet-to-be-issued patent. Once the other company’s sunk costs are large, the patent applicant obtains the patent, asserts infringement, and “holds up” the other company, demanding supra-competitive royalties for a license to the “submarine patent.” The company must agree to supra-competitive royalties or forego its production or innovation. As a result, consumers will either pay higher prices for the company’s goods, or will never get the benefit of the innovation that the company had to abandon.
Partly in response to problems created by submarine patents, and partly to conform U.S. practice to international practice, this law was enacted. The Act now requires publication of a patent application eighteen months after filing, unless the applicant certifies that the invention will not be the subject of any foreign or international application in jurisdictions that provide for eighteen-month publication. Roughly 90% of all pending patent applications are published at eighteen months.
The passage of the Act set the stage for the USPTO to advise the President, through the Secretary of Commerce, and all Federal agencies, on national and international IP policy issues, including IP protection in other countries. The USPTO is also authorized by the AIPA to provide guidance, conduct programs and studies, and otherwise interact with international IP offices and international intergovernmental organizations on matters involving the protection of intellectual property. The USPTO's Office of IP Policy and Enforcement carries out the functions authorized by the AIPA.
- 35 U.S.C. §122.