A key aspect of strategic patenting is U.S. continuation practice. Continuation patents have several advantages and are widely used by small companies to build patent portfolios (especially companies who license their technology). In fact, I almost always draft initial claims with the assumption that clients will file continuations at a later point in time.
A “continuation patent” is a new patent filed with different claims but with the same specification or technical description as a previous or “parent” application. It is afforded the same priority date as the parent patent application. U.S. continuation practice is somewhat unique in the world. It allows an entire patent portfolio to be built around a few key patent applications. In contrast to a divisional application discussed above, a continuation application is one where the applicant desires to obtain more than one patent from the same specification (and priority date).
One advantage of using continuations is that you can get more and better claim coverage. Think of the process as the “Patent Two Step.” In the first step, you file your claims with the original application. However, at that point, you do not know what prior art has been filed in the last 18 months. In fact, unless you have an exceptionally good search report, you may not know of the relevant prior art. Furthermore, you do not know which patent examiner will handle the case nor what prior art the Examiner feels is relevant. In other words, when you file, you are going in blind. So, at this point, as discussed in a previous “Narrow Claiming” post, it may be best just to first narrowly claim your invention and to get a patent issued as quickly as possible.
Once you have one notice of allowance, you implement the second step – you file a “continuation” patent application with new and broader claims. However, by this point, you know the prior art, the Examiner and you know what prior art he believes is important. So, you are much more likely to draft better and broader claims.
A second advantage of using continuations is that you can claim various aspects or embodiments of the invention. Often patent specifications describe several embodiments yet Examiners are pressured to only allow claims directed to one embodiment. Continuation practice allows you to claim several inventions.
However, the most important advantage of using continuations is that the claim scope for the patent portfolio remains flexible. As long as there is some “live” continuation application, you can always change the claim scope of that continuation or you can file another continuation with new claims. This flexibility is extremely important to licensees, potential acquirers, and anyone who might be enforcing the patent portfolio.
There are important cost considerations too. A small business can start with just a few applications, then patent other aspects contained in the applications at a later date – while claiming back to an original priority date. The effective use of continuation practice allows a company to claim various aspects of inventions and systems at a later date when financial conditions are likely to be better.
In fact, the use of continuation patents is strongly encouraged and almost always recommended. With the onslaught of recent challenges to patents, no one can guarantee that a patent will stand up if asserted in court or in a post grant challenge. A continuation patent allows the patent owner to actually change claim scope in light of such challenges.