A recently issued patent that will expire 51 years after its filing date

A US patent that issued recently (August 9, 2022) made me smile for several reasons.  This is a truly remarkable patent, as I will discuss. 

The first remarkable thing about this patent is that it issued at all.  During its tortured prosecution history of more than thirty years, it got appealed five times and got rejected over and over again.   Most patent applicants would have given up long ago.

A second remarkable thing is its patent term.  Normally the expiration date for a US patent will be “twenty years counting from its first US non-provisional effective filing date”.  This US patent issued recently (August 9, 2022) with an effective filing date of April 11, 1988.    So what you might expect is that it would expire April 11, 2008 — meaning it would expire fourteen years before it issued.  This would mean an issued patent with a patent term of negative fourteen years.  My guess is it will actually expire August 9, 2039, seventeen years from now.   How can it be that a patent that we might think should have a patent term of negative fourteen years would end up with a patent term of plus seventeen years?

And what are the other fascinating things about this recently issued US patent that made me smile?

So let’s turn to the oddness of a positive patent term when one might expect a negative patent term.   When I was first in practice, the law in the US was that a utility patent would expire seventeen years after its date of issue.  But on June 8, 1995, Congress changed things.  For patent applications filed on or after June 8, 1995, the patent term would be “twenty years counting from the earliest US non-provisional effective filing date”.  This change happened more than a quarter of a century ago, and one might guess that there could not possibly be any patent applications still pending in recent times that were filed more than a quarter of a century ago.  But such a guess would be wrong, as we see from this recently issued US patent.

Maybe you would like to see this remarkable patent.   Here it is:  US patent number US11406092B1 which issued August 9, 2020 from US application number 07/425,360.

This application was filed so long ago that it gets the old-style patent term of 17 years from the date of issuance.  The application went up and down, to and from the Patent Trial and Appeal Board (formerly known as the Board of Patent Appeals and Interferences) four times, and also had a trip to the Court of Appeals for the Federal Circuit.  And indeed it finally got allowed and it has issued.

Yet another fascinating thing about this patent is that it has two independent method claims that each include the step of “catching the fish”.  Yes, you only owe a royalty to the inventor under either of these claims if you actually succeed in catching the fish.  I am indebted to fellow blogger Dennis Crouch for pointing out the recent issuance of this patent, and for pointing out this delightful aspect of these two method claims.

I was apparently nearly the last person on the planet to learn about this fascinating patent application and its complicated history.   Here are some of the blog articles about this patent application:

• Royal W. Craig, Fishing for a Patent: The One that Got Away, May 14, 2020.  “Christopher John Rudy from Port Huron, Michigan, likes to hunt and fish, and as a patent attorney, he plays the patent system with the same sense of adventure.”
• Michelle (Yongyuan) Rice, Fish Hook Invention Snagged the Bottom Under § 101, April 29, 2020.  “Rudy’s application recites a three-step method: observing the clarify of water, measuring light transmittance, and selecting a fish hook accordingly … .”
• Dennis Crouch, Rudy finally gets his Whale, October 14, 2022.  “The nice thing about Rudy’s claim here is that you only owe a royalty if you actually catch a fish.”
• McDonnell Boehnen Hulbert & Berghoff LLP, Claims Directed to Selecting Fishing Hooks for Use Are Not Patentable, May 11, 2020.  “The application, entitled ‘Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods,’ has undergone a lengthy prosecution, including numerous amendments and petitions, four Board appeals, and a previous trip to the Federal Circuit, in which the Court affirmed the obviousness of all claims then on appeal.”
• Paul Devinsky, Federal Circuit Sinks Another Attempt to Use PTO Guidance, May 7, 2020.  “The Court concluded that ‘[the representative claim] requires nothing more than collecting information (water clarity and light transmittance) and analyzing that information (by applying the chart included in the claim), which collectively amount to the abstract idea of selecting a fishing hook based on the observed water conditions.'”
• Karen Cassidy Selvaggio, USPTO Guidance Cannot Modify or Supplant the Alice/Mayo Framework, April 24, 2020.
• Stephanie D. Scruggs, Fishing for Eligibility in Murky Waters, April 30, 2020.  “The court seized on Rudy’s concessions that ‘all that is required of the angler is observation, measuring, and comparison with a predetermined chart’ and that ‘even a fish can distinguish and select colors . . . the fisherman can do this too’ to conclude that the claim merely relates to the mental process of hook color selection.”