In part-I of this series, I wrote about various types of patent and patent applications that you can use to enhance your intellectual property portfolio and develop a family of patents. The various patent applications use the disclosure and priority date from a priorly filed non-provisional application to summarize part-I. The previously filed nonprovisional application is the parent patent, and the subsequent application is the child application. You can file one or more child applications. In the new child application, the scope of the claims must not be identical to the parent application. The claim scope can be broader or narrower than the claims in the parent patent. Children and sibling patent applications are valuable tools for advancing numerous business objectives and intellectual property strategies and may provide you with additional patent protection; thus, it will increase your patent portfolio evaluation.
Although not every invention or product needs a patent portfolio with continuation, divisional, and CIP applications, you should know about these options and perhaps consider them when appropriate. A good patent practitioner will draft a patent to develop such a family of patents for the best protection and monetarization. In addition, you may avoid damaging consequences, such as your parent, initial, or original patents may become your prior art for your patents disclosing improvements to the invention.
This blog will explain the rationale for enhancing your patent portfolio and invention protection using continuations, divisional applications, and continuation-in-part (CIP).
1) Maximize Intellectual Property Value. If one potential business goal for you is to sell or license your invention, filing a continuation application can maximize value by allowing the purchaser or licensee to use the continuation to pursue their objectives and claims. Moreover, as you know the prior art and a careful plan, you can develop a valuable intellectual property portfolio with multiple patents quickly and inexpensively.
2) Defer Decisions, Costs for a Later Favorable Time. You may file a continuation application to delay prosecution because you may want to defer a decision, cost, or both for a later time. For example, you may restart the examination timeline by filing a continuation application with similar or different claims. Thus, delaying the cost and decision for a more suitable time for you. Therefore, continuation applications can be a tool to coordinate your patent procurement with your funding opportunities and corporate strategies without forfeiting your patent rights.
3) Ever-Changing Market Needs and Technologies. Both market needs and technologies are constantly changing, always heading towards new developing technologies and products. Thus, a pending continuation application may provide a valuable vehicle for drafting claims covering future improvements and advances, as long as the original parent application’s disclosure can support the new claims. However, where such disclosure is not possible, you can prevent your parent patent from becoming prior art to your child’s patent with the invention improvements and advances. Furthermore, during certain circumstances where one or more of your invention embodiments become technologically viable or commercially significant after the allowance of your original patent, a continuation application can safeguard your opportunity to pursue patent protection for these aspects of your invention.
4) Protect Multiple Embodiments and Inventions. The USPTO allows one patent per embodiment or invention, and if the USPTO determines that a patent application covers multiple inventions, they issue a “restriction requirement.” When this happens, the USPTO may divide the application into two or more inventions and ask you to select one of the inventions for examination. In such a case, you may use a “divisional” application to protect the other unselected invention. Thus, a divisional application may assist you in patenting multiple inventions and multiple aspects of your invention.
5) Patent Broader Claims. When you are allowed a patent application with “narrow” claims, but you still need “broader” claim coverage, you can file a continuation application with broader claims. For example, choose to get narrow claims or claims for a particular embodiment, so you expedite prosecution to get a patent for the narrow claims. However, you also need broader claims or claims for another embodiment. In such situations, you can file a continuation application for pursuing “broader” protection or alternative embodiments of the invention or even block others to get around your invention.
6) Law in Flux. The U.S. patent law is in a constant state of flux. A few significant examples are the Leahy–Smith America Invents Act (AIA) of 2011, which went into effect on September 16, 2012, and on March 16, 2013 (more about this in another blog), the Supreme Court’s decisions in Myriadand Alice, which limited what is eligible for patent protection. These two decisions fundamentally altered the patent landscape and, the Supreme Court’s decisions have caused much confusion regarding the subject matter eligible. In 2019, although USPTO issued guidance to Examiners regarding subject matter eligibility, this part of the patent remains in flux. Continuation applications provide an essential tool for addressing legal developments through new claims that may work around recent law changes.
7) Deterrent for Competitors and Offensive Stances. Continuation applications with broader claims can create uncertainty regarding eventual claim scope. Thus, continuation applications can generate ambiguity around the final scope of patent protection and provide a deterrent for your competitors. In addition, continuation applications can be an offensive position against your competitors. An example of offensive stances is when you file a continuation with claims covering a competitor’s product, provided the original parent application described the product.
Moreover, avoid competitors from designing around your patented claims. Because the allowed claims determine the scope of your patent protection, competitors frequently study patented claims and model their patents around them. Competitors do this to avoid infringement and limit your patent claims’ scope and reduce your intellectual property value. This practice is referred to as “fair competition” and is perfectly legal.
8) Comprehensive Patent Protection for Invention. Because continuation applications can generate interlocking patents, they can protect your product more wholly. Thus, making it less susceptible to litigation and invalidation. For example, start-ups may file an initial patent application with claims covering the product’s first iteration with modest scope. Since the claims are of modest scope, they may quickly result in a patent issuance, which can be helpful in fundraising. In addition, prosecution of the initial patent application will identify relevant prior art that can offer guidance on how to draft claims and how to prosecute the continuation application.
9) Litigation. Suppose you are contemplating, expecting, or already engaged in litigation. In that case, continuation applications can be a powerful tool in your arsenal. In such a situation, a pending continuation application allows you to react to the lawsuit’s outcome, e.g., drafting new claims around newly discovered prior art.
10) Eliminate Your Patents As Prior Art For Your Future Patents. If you could file a new patent application to protect your invention’s improvements, your previous patents can become prior art for your new patent application. This prior art poses a significant threat to the allowance of the novel refinements and enhancements of your invention because the Examiner may use your own patented invention as an obvious rejection against your improvement. For example, the modification may be costly, unique, novel, and different from your initial patented invention, or as in most cases, the improvement may be slight and subtle. Yet, the Examiner can effectively argue, in both situations, that the improvement is an obvious version of the parent application’s description. However, you have options if you have the parent patent application or a continuation application alive, which is not allowed yet. If you file a CIP with your revisions, you can avoid obvious rejections based on your original parent patent. Like continuation applications, CIPs must be filed before the allowance of an application. An alternative pathway is to keep a continuation application alive and file a new application for your improvements. In this scenario, if your parent is prior art, the Examiner will want you to file a terminal disclaimer, limiting the term of the new patent to the same as the original patent application. Thus, you may lose significant patent time, but you will get an allowance.
11) Avoid Regrets With Strategical Claim Placeholder. It is best to err on the side of caution and file a continuation application as a claim placeholder. Therefore, it is best to keep your options open. As your business, scientific, or legal goals develop and change, and you need multiple defensive, offensive, fallback, and alternative positions, continuation applications can offer options to combat these new alternations. Thus, the continuation application provides you options to pursue different, new, broader, and additional claims for any of the above or other reasons. Therefore, you should file a continuation application anytime during prosecution but before the patent application is allowed.
The continuation application can be a claim placeholder; for example, it may contain a simple claim upon initial filing, and later the claim is replaced with the placeholder updated claim. After you have had an opportunity to see how the marketplace, your competitors, patent law, your business, and technology are reacting, update the placeholder claim. When circumstances change such that newly updated claims are warranted, you can file a Preliminary Amendment to replace claims with strategically drafted claims to alleviate the altered circumstances, which still find support in the original specification. Therefore, it is critical to file the continuation while the parent application is still pending.
