Is this patent still valid and in force?

4 This news is from 2012/12 and the action was made on 2012/10, but application status is still "grant". Anyone know the current status of the patent?


Posted 2013-06-04T21:53:59.000

Reputation: 113




That's a good question.

The patent was subject to re-exam and all claims stand rejected in a non-final office action. George White or others on the AskPatents site may be able to provide more color on the the enforceability of a patent during re-exam proceedings as well as the prosecution history of this patent, which seems to be convoluted and involves multiple re-exams.

This is an interesting example of how to use the Patent Application Information Retrieval (PAIR) system to find the FILE HISTORY for a US Patent. Re-exams are represented in a non-intuitive but consistent way in that system.

First visit PAIR. Once you get past the CAPTCHA you'll see this:

enter image description here

Note that you must select the Patent Number Radio Box and you must use only the numerical patent number without any commas or other characters, i.e. "7479949". The PAIR interface is ridiculously unforgiving... There is also a byzantine distinction between a Patent Number, a Publication Number, and a Control Number or Application Number.

Search PAIR by Patent Number for issued patents and by Publication Number for patent applications . But we digress...

enter image description here

From here you can see on the highlighted red boxes that it is indeed a "Patented Case" (in this case, as opposed to a Patent Application). You can also see that Steve P. Jobs (Palo Alto, CA) is the First inventor. Finally you can see the tab Continuity Data

Click on Continuity Data tab.

enter image description here This tab refers to other members of the same Patent Family, in particular Continuations of the subject patent. From here you can see the Parents and Children of the subject patent. For example, you can see that the entire patent family Claims Priority to the inventions described in a US Provisional Patent Application filed by Steve Jobs 9/6/2006.

You can also see the Children of this subject patent. Here is where it gets weird. The USPTO represents re-examination proceedings as if they were children of the subject patent. You can see here the re-examination proceeding referred to in the fosspatents article you cited above as child application number 90/012,308, which is pending.

If you click through to that child "patent application" (actually the re-examination) you get a screen like this:

enter image description here

You can see that this "patent application" is of the type "Re-Examination", its status is waiting for an Examiner Action following a Non-Final Action (in this case, the claims stand rejected but we'll see that next).

Click on Image File Wrapper to dig into the detailed discussion between Apple's attorneys and the USPTO.

enter image description here

Wow, that's a lot of dialog between the USPTO and Apple! But you can see on 12-03-2012 as indicated the result of the Re-Examination. This is the same date referenced in your article. Apple has the right to continue arguing with the USPTO (as long as it continues to pay additional fees) but for now this is where the patent stands:

Click through to the document Reexam - Non-Final Action

enter image description here

In this PDF file you will see the current status of the Re-Examination for Patent 7,479,949, which is that all claims stand rejected.

It's not easy to navigate the PAIR system but worth learning if only to see the detailed arguments between the applicant and the examiner. Examiners often spend a lot of time and effort analyzing applications. It's a tough job!

Micah Siegel

Posted 2013-06-04T21:53:59.000

Reputation: 3 085

1Great answer! Except the first two sentences.Patents are in force during reexamination. Yes the claims have been rejected - I would say "all claims stand rejected" to convey that it is a normal intermediate state that doesn't mean much. In most examinations the applicant first gets a non-final "all claims rejected", as happened here. The last thing documented in the record is an interview the examiner had with the patent owner. It looks like the owner had a narrowing interpretation of claim 1. The examiner asked it to be put in writing. I would guess they work out wording both can live with. – George White – 2013-06-05T03:13:20.097

2Wow.. Thanks for the great answer ever. I only saw the patent on Google Patent Search, and its status was grant. I should look into PAIR system instead of it. – Minime – 2013-06-05T18:54:02.747

George, Thank you for the information. I have corrected the answer based on your comment. I didn't know that a patent is still enforceable after a non-final rejection during a re-examination proceeding. At what point does a patent become unenforceable during a reexamination proceeding? – Micah Siegel – 2013-06-05T19:20:02.953


During reexamination, like in a normal examination, the owner can make amendments and arguments, add and cancel claims to try to overcome any objection or rejection. Failing with the examiner, they can appeal to the board, etc. When it is ALL over a Certificate of Reexamination is issued. It indicates which claims were subject to the re-exam and how it all ended up. Then, assuming any claims survived, they are the claims in force at that point. See MPEP a Reissue is a whole different thing.

– George White – 2013-06-05T20:31:34.947

Also, this may be overly technical, but proceeding at the USPTO do not result in validity/non-validity. They result in the patent being left with zero to N claims. Validity is a defense in an infringement proceeding where claims can't get amended. There it is binary. – George White – 2013-06-05T20:36:04.977

George, So unless and until the Certificate of Reexamination is issued by the USPTO all claims are presumed valid as issued in the original patent? Certificate of Reexamination is issued after a Final Rejection or after all appeals by applicant have been denied? – Micah Siegel – 2013-06-06T04:12:29.157