Two months ago I wrote about one of my favorite patents — The Animal Toy — which is U.S. Patent No. 6,360,693. See Patent on a Stick: Learning from the Animal Toy Patent. Shortly after writing that article, which was not intended to poke fun at the Patent Office but to merely teach a point relative to claim drafting, I received an e-mail from Stephen Kunin, who is a partner at Oblon Spivak, LLP. Steve wrote to me indicating that this patent was reexamined by the Patent Office and none of the claims exited reexamination. This in and of itself may not be very odd, but something didn’t seem quite right.
Upon investigation in Public PAIR more confusion arose because there was mention of a petition for reexamination June 7, 2002, just several months after the patent issued. Then Public PAIR next indicates that the application was scanned in at the Central Reexamination Unit (CRU) on September 16, 2003. Then the next transaction recorded in Public PAIR is for the patent expiring on March 26, 2010. But what happened to the reexamination and why is it not recorded in Public PAIR? Was the inventor continuing to pay maintenance fees on the patent to keep it current?
The story, or part two of our tale of the Animal Toy patent, allows us to take a closer look at reexamination in general. The reexamination statute and rules permit any person to file a request for an ex parte reexamination. The Patent Office initially determines whether there is “a substantial new question of patentability” is presented in the requesting petition. If the Patent Office does determine that there is a substantial new question of patentability then a reexamination is ordered. The reexamination proceedings are quite similar to a regular examination process in any nonprovisional patent applications; however, there are a few notable differences. For example, there are certain limitations as to the kind of rejections which may be made, special reexamination forms need to be used, and time periods set to provide “special dispatch,” which means things are supposed to move faster. We can debate whether they actually do move faster, but it is harder for the patent owner to insert delay because automatic extensions of time are not allowed in reexamination. In any event, when the reexamination proceedings are complete a reexamination certificate is issued which indicates the status of all claims following the reexamination.
Steve Kunin has some particularly specialized knowledge regarding the Animal Toy patent because he was the one who authorized the reexamination of the patent. On top of that, it wasn’t an ordinary reexamination request, but rather one initiated on behalf of the Director without there being a pending request by a party or individual outside the Patent Office. See Director Initiated Order for Reexamination. Patent Office rules provide that the Director may, at any time during the period of enforceability of a patent, determine whether or not a substantial new question of patentability is raised by patents or printed publications discovered by the Director or which have been brought to the Director’s attention. The Director has the ability to initiate an ex parte reexamination in these circumstances even though no request for reexamination has been filed. The rules also go on to explain that normally requests from outside the Office that the Director undertake reexamination on his own initiative will not be considered, so never mind writing to the Director and explaining that a Director ordered reexamination should begin. If you want a reexamination there is a path for you to pursue, which is filing a request for reexamination and paying the fee.
When Steve contacted me about the Animal Toy patent I asked him about Director Ordered Reexaminations. He said:
Today, Director Ordered Reexaminations are extremely rare. The Office now relies on third parties to request reexamination of suspect patents, such as the animal toy or the swing patent, if they so choose to expend the resources to do so. Perhaps, with the existing workloads and timeliness pressures on the Central Reexamination Unit, it is quite understandable why we see fewer Director Ordered Reexaminations. The so called frivolous patents that get ridiculed typically have no economic value and will never be enforced. Consequently, it may be wise policy to leave these patents alone and not devote precious examiner resources to reexamining them.
I personally think Steve is correct. I can think of a few patents that I might have ordered a reexamination on if I were Director, but overwhelmingly those patents are not going to be enforced. Typically those that are most deserving of a reexamination request, such as crazy magnet therapies or a way to transport matter faster than the speed of light, simply don’t work and could never be infringed anyway. They do cause a certain amount of egg to be found on the collective face of the Patent Office due to shoddy examination work or a bad sense of humor, but with over 700,000 patent applications that have yet to be picked up for a first consideration on the merits perhaps it is best to deal with that craziness as a personnel matter.
In any event, in the earlier article I wrote about the Animal Toy Patent I said that patent fell into the public domain on March 26, 2010 for failure to make the second maintenance fee payment. That was a true statement, although as a result of the Director Ordered Reexamination all of the claims were canceled when the Reexamination Certificate issued on July 4, 2006. So from July 4, 2006 to March 26, 2010, the Animal Toy patent was in effect, but was claim-less.
There are a couple random things worth observing:
- In order to keep a patent current you must pay the first maintenance fee between the third and fourth years after issuance of the patent. So in order to keep the patent current the inventor had to make the first maintenance fee payment no later than March 26, 2006.
- The Director Ordered Reexamination was initiated on June 6, 2002.
- Despite facing a Director Ordered Reexamination, three years after the initiation of the reexamination the inventor paid the first maintenance fee payment, on June 3, 2005.
- For reasons that are unclear to me, Public PAIR seems to have an incomplete transaction history for the Animal Toy patent.
- If you look at the Animal Toy patent online using the USPTO system there is no mention of the Reexamination Certificate.
- If you go to Freepatentsonline.com to view the PDF of this patent there is, likewise, no mention of the Reexamination Certificate.
The morale of the story is that this patent took a strange and tortured path through the system, but in the end all the claims were lost. This patent doesn’t show the Patent Office at their finest hour, from granting the patent to computer issues associated with incomplete Public PAIR data and no mention of the Reexamination on the patent when you search using the USPTO site. But at the end of the day the Patent Office got this one right, and unfortunately the inventor was left holding not even a patent on a stick.