Patent on a Stick: Learning from the Animal Toy Patent
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Oct 6, 2010 @ 8:21 pm
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The Animal toy patent, US Patent No. 6,360,693, is one of my favorite patents to discuss. The first thing to observe here is that on March 26, 2002, the United States Patent Office issued a patent on a what can only be described as a stick. In support of this conclusion, one need only look at the picture. Yes, I know that the drawings do not define the exclusivity provided, and only the claims define the scope of the right provided to the patent owner, but this is not a case where clever claim drafting and placement allowed a crafty patent attorney to get away with claiming something fundamental and overly broad. Rather, this is a case where the picture and everything in the application is directed to a stick and the examiner seems to have missed that fact. But like all patents the pieces and parts of the patent are present and provide a good learning opportunity given the invention is easy to understand. The fact that it is also rather humorous makes it all the more likely the lesson will stick — pun intended!
Claim #1, the broadest claim in this patent, says that this “animal toy” has a solid main section, at least one protrusion and is adapted for floating in the water. It reads:
1. An animal toy, comprising: (a) a solid main section having a diameter and a longitudinal length and extending a predetermined distance along said longitudinal length; and (b) at least one protrusion attached at one end thereof said main section and extending a predetermined distance therefrom and wherein said at least one protrusion includes a second longitudinal axis that is not in parallel alignment with a first longitudinal axis of said solid main section; and wherein said animal toy is adapted to float on the water.
While not every stick would infringe claim 1 of this patent, I would venture that there are many which would. No need to worry, however. This patent fell into the public domain on March 26, 2010, for failure to make the first maintenance fee payment.
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Of course, claim 1 (of 20 separate claims), and most of the rest of the claims in this patent, are invalid and should never have been issued. The lesson here, however, is not that the Patent Office occasionally makes a mistake (true though that may be). The fact that a patent can be obtained or has been obtained does not mean that a valuable asset has been obtained, and this “invention” is a wonderfully vibrant example of that. There must always be consideration given to whether the protection that is or could be obtained is worthwhile to obtain in light of the intended use. This is where so many inventors go wrong. They want a patent so bad that they never consider whether the patent they can likely obtain is worth obtaining.
Another, perhaps more important lesson is that not all patents are created equally. This particular patent has some 20 claims, 15 of which refer back to Claim #1, the broadest independent claim. These 15 dependent claims each add one element to the above-described stick. For example, claim 2 further defines the stick as being made of rubber, Claim 6 goes on to add flavoring to the basic stick of claim 1, Claim 9 requires the stick to be flexible, Claim 12 requires the stick to be florescent and claim 13 requires it to have camouflage coating. What is notably missing is any claim that adds to the basic stick and aforementioned “limitations” of the claim. When we say “limitations”, we mean the defining factors or components of each claim. In other words, if each of the aforementioned limitations were within a single claim, it is quite possible that the patent obtained would indeed cover a unique animal toy, but that would require the claim to be a stick that floats, is flexible, and florescent camouflage. When all these specific limitations come together, they form a unique “animal toy”, but individually they do little more than provide an amusing basis for learning about patents.
What should the inventor have done and what should the Patent Office have required? A lot more specific features that would limit the claim should have been required to be in the broadest claim for it to have any realistic chance of being considered valid. Simply put, getting a patent that has invalid claims is worthless. Getting claims that are so enormously broad that they are invalid is just as silly, perhaps even more silly, than getting claims that are so excessively narrow that no one could realistically be expected to infringe. At least if you have crazy narrow claims you have an asset. The question is how valuable the asset is, which is another story for another day. But getting extremely narrow claims should be avoided and is one of the tactics used by bargain basement attorneys and agents because they know that if you add enough limitations to a claim it will eventually be considered unique even by the most stingy patent examiner.
In any event, the key to defining your invention is to start by figuring out what the invention is. You need to know what is required to be present in order for you to have a complete invention that works as promised. Then after that stage you look at the prior art and figure how to define the invention so the claim literally captures something that is unique when compared to the prior art. That means you write a claim that is not literally going to capture the prior art and then ask whether the claim is still, nevertheless, obvious as a trivial combination of known pieces and parts in an obvious manner. So you likely have to once again add some limitations to narrow the claim to have a realistic opportunity to define a claim that should be allowable.
In order to obtain complete protection for an invention it is necessary to first identify the number of possible limitations that together make up the most narrow embodiment of the invention. After determining the number of limitations, one must subtract the number of limitations required to overcome the prior art (by “overcome the prior art” we mean to make this invention patentably unique when compared to previously existing versions of the invention). The resulting number represents the number of different ways the subject invention can be configured to overcome the prior art. It also must adequately, completely and descriptively define the most narrow embodiment of the overall invention. In order to determine the number of possible configurations that fall within the range from patentability to full protection the product of the number of choices is acquired, which provides the total number of possible permutations. For example, consider a classical mathematical probabilities question: How many different ways can 5 cards be arranged? The mathematical equation to solve this problem is:
5! (Read: 5 factorial) = 1 X 2 X 3 X 4 X 5 = 120
This expression factors in all possible permutations, some of which would be considered identical for patentability purposes. For example, A+B+C would be the same, generally speaking, as A+C+B. In order to determine the number of unique combinations the formula then becomes:
n! / 1 (n – 1) = 5! / (5 – 1) = 5! / 4 = 120 / 4 = 30
The “1” in the above equation is present because it is only necessary for 1 of the 5 additional limitations must be present. Similarly, if your invention as completely and most narrowly described adds 5 things over and above the prior art, 30 claims would be necessary to cover all combinations of the invention. Adding a single additional limitation (i.e., 6 limitations) would lead to 720 permutations and 144 unique combinations, which means 144 claims would be necessary for all combinations to be covered. As limitations are added the number of combinations rapidly increases, which is why individual inventors and small businesses rarely, if ever, obtain the fullest protection available. Of course, the reality that a certain number of limitations must be present to overcome the prior art would reduce the number of combinations that are actually capable of receiving patent protection. But even simple inventions can have literally dozens of limitations, so obtaining protection on each and every unique combination can be quite expensive.Notwithstanding, the importance of covering all combinations can be seen by referencing the Animal toy patent. Claim 1 is certainly invalid, and each of claims 2 through 16 add only a single limitation. One must ask, does the addition of a single limitation to what is a stick mean that that combination is patentable? The answer is likely not, particularly in a post KSR obviousness world where the question of whether an invention is obvious is one of “common sense.” So each of claims 1 through 16 are likely invalid because a single characteristic added to a stick seems hardly unique.
Thus, in one fell swoop, 16 permutations have been eliminated as invalid, and that means all of the combination claims are gone. The reason to cover as many combinations as possible is to guard against the loss of all protection due to the failure to find prior art that is later found to invalidate the permutations that have been selected for protection. So here, with the Animal toy patent, the fact that the patent examiner granted the patent is hardly relevant. The claims are almost certainly invalid so you would likely have an impossible time licensing the patent, and it would be silly to even consider enforcing such an obviously flawed patent through litigation.
The truth of the matter is that in terms of patent applications, you get what you pay for. Many times applicants place restrictions, normally financial restrictions, on patent attorneys. This limits the amount of time a patent attorney can spend drafting the all-important initial filing, and limits the number of claims that can be filed. In short, claims cost money, and good claims that can be upheld will cost good money. Do not expect that as a small businessperson or inventor you will have or be able to justify the cost of patenting every possible permutation or combination of your invention, it is usually not possible. However, also do not expect that patenting an invention “on the cheap” will result is a satisfactory patent that encompasses the important components of your invention. Taking the time to understand all the possible permutations of your invention and then consulting an attorney to discuss which claims can and should be included in the filing is a preventative measure that should be undertaken in every situation.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.