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The Strange Case of the Animal Toy Patent: Reexam Redux


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: December 3, 2010 @ 11:19 am
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Animal toy - US Patent No. 6,360,693

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:

  1. 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.
  2. The Director Ordered Reexamination was initiated on June 6, 2002.
  3. 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.
  4. For reasons that are unclear to me, Public PAIR seems to have an incomplete transaction history for the Animal Toy patent.
  5. If you look at the Animal Toy patent online using the USPTO system there is no mention of the Reexamination Certificate.
  6. 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.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Museum of Obscure Patents, Patents, Reissue & Reexamination, 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.

 

30 comments
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  1. The patent does “lose” documents all the time. I’ve got a few decisons from the BPAI that were never published — i.e., you cannot find them when going to the BPAI portal and search engine.

    You have to wonder, is it incompetence? inexperience with a rare process (e.g., a Director-initiated reexam)? or a desire to bury certain goings on at the Patent Office?

    Consider that Kappos cannot change the culture at the USPTO overnight and there is a lot left over from the Dudas regime, I wouldn’t rule out anything.

  2. Not the USPTO’s finest hour, that’s certain.

  3. Gene–your maintenance points in this posting got me thinking; do you know why (or any conjecturing) an inventor/company can’t/isn’t allowed to pay one or more of the maintenance fees earlier than the start of the stated “time band” periods for each maintenance fee?

    Unless prohibited by law/statue, is this something Mr. Kappos could modify? I understand having concrete final cut-off time periods for these payments, but why prohibit earlier payments by those who would like to do so?

    I’ll bet many 1,000s-10′s of 1,000s of inventors/companies would do so (including me); which could only help the office with cash flow.

    Is this another worthwhile option the office could offer everyone?

  4. I don’t know that I agree with you and Steve on the harmlessness of frivolous patents. Even if “most” of them will never be enforced, “some” of them probably will, potentially costing taxpayers and defendants a great deal of time and money that could have been saved had the examiner opened his eyes. If things like “animal toy” are getting through, how many other, equally invalid (say, from prior art) but less-frivolous-on-the-face patents are getting through? “Animal toy” does not instill much confidence in the current processes of the USPTO, yet patents carry a great deal of weight and can be used to bludgeon companies over the head with licensing or attorney’s fees. I think these completely ridiculous patents are just the visible tip of the proverbial iceberg that is the dysfunction of the USPTO. Maybe if we find enough examples the USPTO will be shamed into getting its house in order, but for now it seems like Steve’s stance is the prevailing one: that the office can just keep limping along as long as the consequences of its ineffectiveness are paid by someone else.

  5. Justin-

    It seems you didn’t understand the article. You incorrectly state that the consequences are paid by someone else, and to get to that conclusion you assume without anything other than belief that at least some silly patents must be enforced. You will need more than speculation to bolster a position that is inaccurate on it’s face. The animal toy and similar patents would not be enforced and aren’t enforced. Stupid, obviously ridiculous patents are not enforced. Hiring an attorney to enforce a patent can easily cost millions of dollars and finding a contingency attorney for an obviously defective patent is impossible. So while your conclusion seems to make sense it is built on factually incorrect statements. That means your conclusions are flawed, and in fact wrong.

    -Gene

    Sent from iphone

  6. Gene, in my observations of this subject over many years now, these rare Commissioner-ordered reexaminations are not ordered just in response to a third party complaint, but rather where there is a pubic media exposure of the patent which could be politically embarrassing.
    What is really interesting is just how fast the PTO can handle those reeexaminations as compared to the number of really important patents in reexaminations that have dragged on for years.

  7. Paul,

    Although I understand the meaning intended, I am not sure that “interesting” is the word I would use.

    I also do not know (and thus reserve judgment) of the level of discretion allowed between which cases receive what varying levels of dispatch. And while “because I feel like it” is a rather unsatisfying rationale, perhaps it is all the rationale that is required (legally speaking, of course).

  8. Dear Blind Dogma,
    Let me put it this way. If you were a examiner faced with a large docket of cases, and only one was a reexam that was ordered by your boss, which one would you pick up to work on?
    As to application examination priority in general, as you know, the PTO has internal rules about that which are supposed to track them to their original filing dates plus uber-priority for reissues and petitions to make special, statutory “special dispatch” for reexaminations, etc. But enforcing those priorities on examiners has obviously been a long-standing problem, and and an all too frequent extreme failure. [See, e.g., the number of "submarine patents", reissue patent applications and reexaminations regularly taking longer than applications for mouse traps or toilet seats, etc.]
    But Dave Kappos is really trying to get more rational PTO case handling priorities that will hopefully finally encourage and help more examiners to put difficult but far more imporant cases on the top rather than to bottom of their work piles.

  9. Gene -

    Tha PAIR records are not incomplete. A ‘re-examination application’ is assigned its own serial number, with a sequence no. starting at 90. If you look at the ‘continuity data’ for 6,360,693 you will find the re-exam serial no. 90/006,301. Click through, and you will find the full re-exam history, including the image file wrapper. Interesting reading — it seems that the inventor was determined to send good money after bad! And the payment of the maintenance fee is even more mysterious, given that it appears the Office had already decided the matter some months before the fee was due.

    Based on recent experience, I would suggest that if the Director’s re-exam request was filed by a third party today, it would not be granted. There is no way it meets the current standards being applied by the USPTO to establish an SNQ!

    - Mark

    PS You need an Aussie to tell you how to navigate the PAIR system?! :-)

  10. Gene,

    You are assuming without anything other than belief that no attempt has been or will ever be made to enforce a silly patent. Not one single owner of one of these patents has sent a cease and desist letter to another party, or has attempted (and likely at some times succeeded) in shaking someone down for licensing fees? You assume that “enforced” means spending millions of dollars on an attorney, but the truth is that most enforcement efforts never involve a pleading precisely because of the high cost of litigation. I think it is a fair assumption that if someone is willing to go through the trouble and expense of filing such a patent, that same person would be willing to go through considerably less trouble and expense to fire off some threatening letters. Many small and fledgling businesses, after receiving these letters, have no choice or do not know any better than to either cease infringing the so-called patent, or to pay licensing fees. (I would also point out that a patent you think is “obviously” ridiculous may not appear that way to someone who has no experience in such matters.)

    You also do not address the main thrust of my comment, that if these “obviously” silly patents are getting through, then there are assuredly even more patents slipping through for inventions that are maybe not “obviously” silly, but still silly to someone who knows better. Amazon’s “one-click shopping”? Monster Cable’s design patent over what amounts to a generic RCA plug (and we know they send out C&D letters on that one)? Firepond/Polaris? Apple’s “slide to unlock”? (I cannot readily recall, but that last one may even now be a factor in what is sure to be millions of dollars worth of litigation between Apple and HTC.)

    So yes, we can look at “animal toy” and laugh, but even if I concede your argument that the obviously silly patents have and never will hurt anyone (if nothing else, they take up time better spent on examining real inventions), they are still markers of much bigger problems in the USPTO. I would hope that the USPTO would want to address these problems and I submit that one of the first signs of progress would be that patents like “animal toy” are ejected from the process in short order.

  11. I would think that to be “fully” complete (pardon the oxymoron), that the reexam file would contain the actual request for reexam and any of the information/material/search results of the examiner in her deliberation of whether SNQ was met or not.

    If but for anything else, the rules of the Office state that such needs to be in writing, and I cannot understand why these particular writings are typically absent

  12. Justin-

    I’m not the one doing the assuming. You are speculating about everything you write and you want me to prove your incorrect speculation is incorrect. You cannot prove something didn’t happen or doesn’t exist. So it us up to you to stop with the nonsense of guessing that silly patents like the animal toy are enforced and give concrete examples of when such silly patents were actually enforced through litigation or licensing attempts.

    You also assume because one examiner let through a silly patent there must be others in mire important areas. Still speculating without a shred of proof.

    Please keep it real. Either give proof or acknowledge you are guessing, and for goodness sake give up pretending that I’m not responding. You’ve offered nothing to respond to other than supposition.

  13. I understand what you are saying about PAIR nit being incomplete, but I disagree. The UFW mentions the reexam and then nothing else. That is ridiculous. We are talking about electronic information and it should be available in one place. You shouldn’t have to search under various serial numbers for information about a patent. A reexamined patent emerges with the same patent number, so there us no justification for everything being associated with the patent number. With electronic files it is as simple as tagging or otherwise associating various files with a patent number. It us ridiculous that the IT systems at the patent office are so out if date that this basic electronic filing and document management functionality is nit provided.

    So go ahead and believe it is not incomplete but the reality is that a file that purports to have the transaction information really ought to have the transaction information. So I’m not commenting on anything other than the craziness.

    It is also ridiculous that when you do a search and find the HTML version of he patent on the office website thatvthere us no mention of the reexam and not even a mention of the reexam certificate. There is no excuse for that. The office would be better off not making any records available rather than making inaccurstrvrecords available and then requiring people to know where to look for information that may or may not exist. In an electronic age there is mo excuse for the patent office not having a centralized electronic file for each patent and application that actually contains ALL the relevant history and procedural happenings. It is an embarrassment that the patent office IT systems are so antiquated.

    Sent from iPhone, sorry for any typos.

  14. Someone in this chain mentioned prepayment of maintenance fees. It will never happen for at least two reasons:

    1. It would kill PTO budgeting estimates and, with limits on using collected PTO fees in a given year, would result in the fees going to the general treasury instead of the PTO.

    2. Fees go up every year and the PTO isn’t going to allow early payments at a discount.

  15. Gene – I have noticed the difficulty in being alerted to reexam certificates in the past. The one public tool I have found useful, that I discovered on a previous article/comment on this site is http://tools.patentcalls.com/ . If you punch the animal toy patent into their seach page, you are instantly alerted to there being a reexam certificate.

    YB

  16. At the risk of conflating subjects and losing some of the audience, let me set out a hypothetical question:

    Company A has fought for a critical patent and the claims are embodied in product B which is set to launch six months after the patent issues. The product is amazingly simple and breathtakingly easy to use in a crowded art field – guaranteed to be a commercial success, and just as guaranteed to bring cries from the hindsight obvious crowd (your competition). Unfortunately, the marketing department isn’t quite up to speed and has not yet finished product packaging (included the “patented” or “patent pending” language).

    One month after issue you are notified that multi-national conglomerate C has requested reexam (with fictitious journal articles made up and posted on wikipedia.org), and that the examiner obviously unfamiliar with the art (i.e. buys the fictitious article) and places your patented item in reexam.

    As CEO, you know that the market will look askance at a patent pending mark – you need the patented mark. At three months after issue, and two months after entering reexam, you are about to call the marketing director and tool manager to set the notice language and pay the big bucks for expensive tooling to make that language.

    Do you tell them to mark the item “patented “? Why or why not?

  17. Do you tell them to mark the item “patented “? Why or why not?

    I’d go with “U.S. Patent No. (the number of the issued patent)”. As in every other marking case, determining validity and enforceability is the copier’s problem.

    Also, would it kill you to get a design “patent”?

  18. Points for the design patent suggestion – that is a nice touch.

    Loss of point for the U.S. Patent No. advice.

    Consider that since you know that your patent number has been dragged back into reexam and that your patent rights are not enforceable (for one thing the patent in reexam has lost its presumption of validity), you are knowingly marking with false information. Since it is black letter law that the mark is the status – your choice is illegal. The comment of “<i.As in every other marking case, determining validity and enforceability is the copier’s problem.” ignores where the actual responsibility lies – that responsibility lies with the marker under the marking statute.

  19. @Blind Dogma
    You present an odd situation. If you are speaking of the market’s viewpoint as the actions of consumers, it would seem unlikely that a significant portion of the market cares about the difference between having a patent no and patent pending. Even caring about patent marking at all seems to be a small group. If an important portion of the market actually cared enough about who actually invented a certain technology to change their buying habits, then publishing papers on the subject would be a simpler and more cost effective solution than acquiring a patent. I suppose mentioning your product is patented can be nice for a sort of buzz word, but there’s no shortage of those, and many options have little to no legal requirements.

    If you aren’t speaking of the consumers but rather potential investors and competitors, then I don’t see how the marking of packaging to consumers is going to change things for them.

  20. you are knowingly marking with false information.

    The patent number is not false information. The marking doesn’t make any particular claims about the patent (other than not being expired at the time of marking, perhaps), it simply identifies the patent, which actually exists and actually covers the product unless and until it is amended in reexam. It also happens to be the most up-to-date publication number you have. The patent will still have the same number even after reexam, so the marking will still be fine unless the patent has no claims left that cover the product.

    But if it really bugs you, and this situation is foreseeable, I recommend committing to the marking the day you get the Issue Notification. Buy an expensive mold or package template that you can’t change, and make sure you have enough stock to outlive the reexam proceedings.

    Consider that … your patent rights are not enforceable (for one thing the patent in reexam has lost its presumption of validity),

    That’s “black letter law”, is it?

  21. The patent number is not false information.

    Technically, that is correct. Now care to try why this technically correct reply doesn’t actually reach my statement? Here’s a hint – it has to do with the laws on marking and using that patent number.

    Perhaps a clear understanding of what is ‘claimed” when using a mark would be beneficial (and legally, it is more than simply identifying the patent).

    And yes, it is black letter law that a patent in reexam does not enjoy the presumption of validity.

  22. IANAE,

    It appears that you do not have much to say when the tricks are taken away. Isn’t it curious that your conversations on this blog are always so much shorter than at Patently-O?

  23. Isn’t it curious that your conversations on this blog are always so much shorter than at Patently-O?

    Is it?

    I consider this blog a bit more structured and more actively moderated, so I try to keep to the tone I think Gene prefers. I’m less likely to post here without having something to contribute, and I’m more likely to let someone else’s post sit unanswered if I feel people will draw the appropriate conclusion without my help.

    In this case, my “That’s ‘black letter law’, is it?” was my glib little way of saying “It isn’t, and find me an authority that says different”. It wasn’t a request for the poster to stand by his original statement with a conclusory “yes, it is”. Since I consider that point to remain unanswered, and I can’t really respond to post 21 any better than I responded to post 18, I have nothing further to add at this time.

  24. I think the key is “more actively moderated“. Your half truth should be framed appropriately.

    The stuff you pull at the wild west of Patently-O simply would not be tolerated here because the way you twist the law and the way you twist what people say about the law would have you banned like the other joker of Patently-O infamy – 6.

    Your comment about “nothing to add” doesn’t stop you from your initial posts – here and on many other threads of this blog. Your comments typically stop at the point where your point has been refuted and your only response would be your typical chicanery. That is the appropriate conclusion to be drawn, with or without your help.

  25. The stuff you pull at the wild west of Patently-O simply would not be tolerated here

    Which is why I don’t do it here. I do it where it is tolerated (some might say “condoned”), and I don’t do it where it’s not welcome. A place for everything, when in Rome, and all that.

    Your comments typically stop at the point where your point has been refuted and your only response would be your typical chicanery.

    Okay, if you consider my arguments refuted by an unsupported “yes, it is” that is clearly wrong. I consider that a big neon sign saying my interlocutor would rather repeat his opinion than have a rational discussion, and from that point forward I don’t usually consider the dialogue productive.

    I stop posting when I have nothing more to add. Draw whatever conclusions you like. I don’t live and die by your opinion of me, here or on Patently-O.

    Now, did you want to talk about re-exams?

  26. Now, did you want to talk about re-exams?

    The real question is do you want to have an honest talk about re-exams?”

    Since you openly admit that you will not pull here the type of dishonest discussions you have over at Patently-O (for the apparent fear of the proper retribution), the obvious answer is “No.”

    And my answer to you (to a dishonest discussion), is the same “No.”

  27. See, that’s normally the sort of post I don’t think is worth a response.

    It’s only because of our recent back-and-forth that I feel compelled to even point out to you that I’m not responding.

    Nice talking to you.

  28. See,

    Honesty hurts those that are dishonest. I wish I could tell you that anything that you have said is a surprise, but I cannot.

  29. By the way, Gene,

    Thank you for the diligence in your forum – serious patent practicioners appreciate it.

  30. I do believe I detect a hint of sanctimony, tinged with irony but completely devoid of self-awareness.

    But yes, Gene, we do appreciate your keeping a sense of order around here. Moderation in all things, I always say.