Arguably the most fulfilling moment of patent prosecution is the moment you receive a Notice of Allowance in your inbox. Great news – but – just as you might have thought you were done with patent expenses… be prepared to make some difficult decisions if you’re on a limited budget.
This article explores the filing of a continuation application – with a list of advantages. But first, let’s start with the one (and typically only) disadvantage: 20 year monopolies are not easy to obtain and, to check-and-balance our capitalist system in granting you such monopoly, the USPTO and it’s Examiners are designed to find any reason they can to reject your rights and make the process quite difficult and expensive. Thus, the disadvantage is that patent prosecution of multiple patents is resource intensive and often not the place an early stage company should get overly ambitious desires.
Now, let’s step back to the basics.
A continuation application is a new patent application (the “child application”) that allows the pursuit of additional claims based on the original patent filing (the “parent” application). In general, the continuation requires the same description and figures (“specification”) of the parent application, but also requires a new set of claims (the “continuation claims”). The continuation claims, however, must be supported by the parent specification.
Few rules of patent prosecution are as firm as the filing deadline for continuation and divisional applications. Even an abandoned application can, under certain circumstances, be successfully revived with a proper petition – but, once a patent issues with no other related active cases, the deadline for filing any divisional or continuation claims has expired. Why this really matters is because any unclaimed subject matter or unclaimed alternative embodiments now, and forever, have entered into the public domain and are free for the public to make, use, offer, or sell (so long as they don’t violate the parent claims). A crafty competitor might design around your claims – and you will be left with no resource (see points 2 and 3 below).
Provided below are the key advantages with continuations that may make you want to rethink concluding the patent prosecution process on your innovation with your first granted patent.
1. Expanding Scope of Protection
Having more claims attached to the invention results in more variations and a broader scope in which the invention is protected. A continuation filing doesn’t mean your parent application isn’t granted. You still obtain those rights in a granted patent. Rather, a continuation filing is an additional patent, and serves as the primary building block of many patent portfolios. In this way, the application obtains an expanded scope of protection for their innovation (…imagine a 360-degree sphere of protection, rather than a fence).
2. Claim the Priority Date of the Original Invention
A continuation is an iteration of the parent application. Because of its inherent relatedness, a continuation claims the priority date of the parent application.
Having a continuation pending at the USPTO allows you to amend the claims of that pending application to more clearly cover the actions of competitors and protect your rights, while still preserving your patent priority date as established by the parent application.
For example, if your competitor creates a variation to your technology, and you still have a continuation pending, you may claim that variation (i.e. subject matter) and claim patent priority to it as of the parent application’s priority date! This is an excellent tool to monitor and enforce against design around attempts by your competitors.
3. Continued Innovation and Improvements
With most inventions, the first version is not the last version. The natural progression of updating and improving the invention may leave an inventor wanting for the new subject matter to be covered in the patent filing. Having continuation claims pending allows an inventor to continue improving and creating variations, while being able to claim the improvements and modifications as they arise. If, however, there are no pending claims and all have been granted – then the inventor is prohibited from filing additional claims on the same invention.
Even worse, if the inventor files a patent application that does not claim prior to the parent patent (and is, therefore, considered a new application and not a continuation application), then prior granted patent claims may serve as ‘prior art’ against the inventors new claims in the new application. This effectively eliminates the inventor’s ability to claim incremental improvements to their invention and requires that any new improvements be ‘independently’ novel and unobvious in view of the prior patent claims.
Thus, having even just one continuation claim pending further allows an inventor to submit additional claims in anticipation of market trends and in future iterations without worrying about prior art that post-dates the original patent filing date of the parent application.
4. Easier and Typically, Less Expensive
From the start, the majority of the continuation is already finished due to the same specification requirement. The only new subject matter needing to be drafted is the claims. Because of this, the time needed to draft and file the continuation is typically substantially less than the parent application.
Further, it is more than likely that the patent examiner prosecuting the continuation will be the same examiner that prosecuted the parent application. This can lead to less confusion, less office actions, and a clearer road to allowance.
5. Higher Likelihood of Patent Grant
Because what is claimed in the continuation is typically a variation of the subject matter claimed in the parent application, the majority of what is claimed in the continuation is typically already allowable. Therefore, less subject matter is argued over, and would be easier to work with and modify.
Further, the attorney and applicant have a head start prior to filing the continuation by knowing the prior references the examiner previously cited and used to argue during the patent prosecution of the parent application.
6. Adds More Asset Value to the Product and/or Company
Having more patents increases the value of a portfolio. When continuations are added to the portfolio, the patentable subject matter has an expanded scope of protection and allows for current and future variations of the invention to be protected.
Further, if you’re interested in licensing or selling your innovation, licensees and acquirers aren’t typically interested in purchasing just one patent, and one they can’t even mold to their liking. Acquirers and Licensees looking to acquire patents seek portfolios with an expanded scope of protection so competitors have a difficult time designing around the patents.
Lastly, at least one active continuation application is attractive to acquirers looking to purchase IP because they can then manipulate the claims to their specification while still maintaining the parent priority of the original patentee. This enables the acquirer to direct the coverage of the patents to a direction in line with their strategic concerns.
7. Helps Control Competitors by Mitigating Design-Around Attempts
Designing around a patented invention is a common tactic of competitors, no matter the industry. To prevent and discourage this practice, having broad claims and claims for possible variations is needed. Continuations can achieve both, even if the parent application as allowed has a more narrowly tailored set of claims than you are happy with.
The continued evolution of a product while broadening protection and claiming priority to the parent application presents an attractive avenue for an inventor by filing a continuation and should be considered by anyone looking to take their intellectual property portfolio to the next level.
Divisional and Continuation-in-Part (CIP) Applications
A quick note on the divisional and CIP applications would be well placed here. Like a continuation and often considered to be ‘types’ of continuation applications, the divisional and CIP are based off a parent application but serves other specific purposes.
Divisional applications pursue any non-elected claims from a restriction requirement that might have been issued in the parent application (e.g., when your claims reflected more than one invention), retains the original priority date, and can be filed at any time prior to the issuance of the patent.
If there are any new aspects to the invention that are not supported in the specification, a continuation-in-part application captures those new aspects, while still relating parts of the invention back to the parent application.
The Common Element
Of critical note, for continuation applications, divisional applications, and continuation-in-part applications, once the parent application issues, there is no opportunity to refer back to the original filing date and any public documents, including your own patent, will be prior art for any new applications having similar subject matter!
There are strategic benefits in keeping a divisional or continuation application pending, particularly for pioneering inventions, or for competitive situations where litigation or other disputes may arise. Having an application pending at the USPTO allows you to amend the claims of that pending application to more clearly cover the actions of competitors and protect your rights. Divisional application(s) pursuing the non-elected claims, retaining the original priority date, can be filed at any time prior to the issuance of the patent. Additionally, if there are any new aspects to the invention, we would recommend filing a continuation-in-part application that captures any new aspects. Therefore, please consider whether you want to file a divisional, continuation, and/or continuation-in-part application.
If you decide to file such application(s), please let us know as soon as possible so that we will have sufficient time to review the matter and prepare any appropriate application(s) prior to the issuance of the patent.
Once the patent issues, there is no opportunity to refer back to the original filing date and any public documents, including your own patent, will be prior art for any new applications having similar subject matter.
Dated October 13, 2020
Yuri Eliezer and Robert Wiesenberg