As a patent attorney, I often advise clients on strategies to maximize the value and protection of their intellectual property. One powerful tool in the patent prosecutor’s arsenal is the continuation patent application. Authorized by 35 U.S.C. §120, continuation patent applications allow inventors to pursue additional patent protection based on an earlier filed pending patent application, potentially extending and broadening their existing patent rights.
Why Consider a Continuation Strategy?
1. Adaptability to Market Changes:
Continuation patent applications allow applicants to keep their technology patent pending and adapt their claims to evolving market conditions or competitor activities. This flexibility can be crucial in fast-moving technology sectors.
2. Addressing Prior Art:
If new prior art emerges after the parent patent application has been issued, a continuation patent application allows you to have that prior art considered and potentially draft claims around it, strengthening your patent portfolio.
3. Supporting Litigation Efforts:
In enforcement scenarios, continuation patent applications can be used to draft claims that more closely match an infringer’s product or process, enhancing your litigation position.
4. Capturing Additional Inventive Aspects:
Often, the full scope of an invention isn’t apparent when first filing. Continuations allow you to pursue claims on aspects of the invention that weren’t initially emphasized.
5. Overcoming Prosecution Challenges:
If you face difficulties with an examiner in the parent patent application, a continuation gives you a fresh start, with another opportunity to help the examiner appreciate the technical advantages the invention has over the prior art.
6. Non-Publication Option:
For some clients, particularly in competitive industries, the ability to file a non-publication request with a continuation patent application can be strategically valuable, keeping the invention confidential until patent issuance.
7. Leveraging Examiner Familiarity:
Continuation patent applications are often assigned to the same examiner as the parent patent application. This familiarity can sometimes lead to more efficient prosecution.
Practical Considerations
When implementing a continuation patent application strategy, consider filing terminal disclaimers preemptively to address potential obviousness-type double patenting issues. This can sometimes lead to smoother prosecution.
It’s also worth noting that the USPTO has proposed changes to terminal disclaimer rules and fee structures that could impact continuation patent application strategies in the future. As always, it’s crucial to stay informed about evolving patent office policies and adjust strategies accordingly.
Conclusion
Continuation patent applications are a valuable tool for building a robust patent portfolio. They offer flexibility, extended protection, and strategic advantages that can significantly enhance the value of your clients’ intellectual property. However, like all patent application strategies, they should be used judiciously and in consideration of the specific needs and goals of each client.
Remember, the best patent strategy is one that aligns closely with your client’s business objectives. A thoughtful continuation patent application strategy can play a key role in achieving those objectives and maximizing the return on investment in patent protection.
About the Author
Jack Abid practices in the area of patent prosecution and IP portfolio management. His patent prosecution experience includes electrical and electronic equipment, telecommunications equipment and cables, laser and optical devices, semiconductor devices, semiconductor processing, mechanical devices, medical devices including implants and telemedicine, and software.
