“Congratulations Nick,” I said, “Your application was allowed by the Patent Office!” Nick was happy to hear this news, and glad to know his company would be getting their first patent.
I went on: “I’ll send you an official report, and we’ll need to pay the issue fee. We’ll also need to chat about a potential continuation application.”
“Really? What’s that?” was Nick’s reply. “We need a continuance now? I thought we were done.”
What’s a continuation patent?
A continuation application is really just another patent application built on your previous one. The idea here is that you can daisy-chain patent applications together and keep the original filing date. Why does that matter? Because the Patent Office considers anything from before your filing date to be prior art that can be used against your application. So the earlier your filing date can be, the better.
Continuation applications go through the examination process like any other patent application. They’re one version of what’s called a “continuing” application, which includes three main categories:
- Continuation: With a straight continuation, you file different claims but keep the same written description and drawings.
- Divisional: With a divisional, you essentially split off some of your original claims and file them as a second application, with the same written description and drawings. This is usually in response to an Examiner sending a Restriction Requirement, which says you’re trying to claim too many inventions for one application. However, it may also be in response to a portion of your claims being deemed allowable, in which case you may pull the other claims out of the application and file them separately, permitting the original application to move on to issuance.
- Continuation-in-Part (CIP): Here, your second application uses the original description and drawings, plus some new information and maybe some new drawings. New claims are written, and they may be based on the original disclosure, the newly added material, or both. The caveat here is that the new material will have a new filing date, for prior art purposes, while the original information retains the earlier one.
All three of these fall into the category of “continuing applications.” Which sounds a lot like “continuation applications,” although only one of the categories is literally called a continuation. It can be confusing.
The big requirement is that your second application must overlap with your first one, in terms of time. Specifically, you have to file the second application BEFORE the first application issues or becomes abandoned.
Why should I consider filing a continuation application?
“Well, Nick,” I said, “It’s definitely not a requirement to file a continuation. But you’re trying to build a portfolio for your company, and there are many reasons why a continuation might be a good idea.” Nick seemed a little skeptical, but I went on to explain some of the benefits.
- You can go after different claims on a different invention
Sometimes (often, if you have a good patent attorney) you will have described more than one invention in your patent application. This can be the case if your product has multiple new features or if you have multiple variations on the same inventive concept. You can only pursue claims on one invention at a time, though. So, you might have gotten a patent on invention A in your first application, and now a continuation can be an opportunity to get a patent on invention B.
- You can go after different claims on the same invention.
One option at is to file a continuation to pursue a different type of claim on the same invention. For example, if your original patent has claims on an “apparatus,” maybe you could go after related “method” claims. Another idea would be to file new claims on a different embodiment of the same invention. For example, maybe your first version has three wheels, and now you file on one with two tank tracks instead.
- You can try more “aggressive” claims.
After going through the examination process, you and your attorney will have a much better feel for the prior art, and what else might be allowed by the Patent Office. This may allow you to file broader claims on the same invention. That might mean you don’t have to get so specific about certain features, or you might even eliminate certain items from the claims that have proven to be less critical to patentability. Maybe the Examiner clearly found a certain aspect of your product to be the “inventive” part. You can focus more on that aspect and worry less about the rest. This can result in stronger protection overall.
- It keeps your competition guessing.
When your competition plans to go to market with a new product, they’ll usually ask their IP lawyer to determine the risk level and do what’s called a “freedom to operate” study. In other words, the company asks “Are there any intellectual property rights out there (including patents) that will pose a risk for our new product strategy?”
When your patent comes up during this analysis, one of the first things they’ll try to do is find a way to “design around” your patent claims. Maybe there’s a way to make their product that won’t infringe. However, any patent attorney knows that might not be the end of the story. They will also look for continuation applications, especially active ones, to see what additional rights you may have. The key is that the claims of an active patent application can be amended during examination. That means your competition literally cannot predict what additional rights you might obtain. This makes it much harder to come up with a strategy to get around your IP.
- It keeps your options open in case something unexpected happens.
Things happen. Sometimes new prior art comes to light after your first patent has already issued. Maybe that prior art is different than your invention, but it looks a lot like what you claimed in your patent. I’ve had clients in this situation.
Here’s a story about one of those clients I just mentioned: Catherine (my client) went to Company X to see if they’d like to license her company’s latest technology, which she had already covered by obtaining a patent. Company X pointed her to an article in a trade publication. It showed a similar device to what Catherine had patented, but she hadn’t seen it before. They loved her technology, but wouldn’t talk to her about licensing. Not until she’d proven that her company’s patent rights were valid over the prior art device in that article.
Luckily, she had a continuation pending! We were able to submit that article to the Patent Office and amend the claims to clarify how Catherine’s invention was different. She went on to get a strong second patent, now with proof that the prior art had been considered in the process. Crisis averted.
When should I be less concerned about a continuation?
Honestly, there are only a few times when you shouldn’t worry too much about filing a continuation.
- Budget – you may have used up your budget for this particular invention, or another one takes precedence. You’ve got a patent already, so you’re okay with closing out the project.
- Prior Art – based on the prior art you know about after prosecution, you’re pretty certain you’ve gotten all the patent rights you’re likely to get.
- Already Filed Enough – maybe you’ve already filed several continuations in this family of patents, and you’ve reached the point of diminishing returns.
That’s about it. Of course, every situation is different, so please make sure you discuss this with your attorney.
As was the case with Nick’s company, filing continuation applications can be an extremely valuable part of your patent portfolio strategy and a vital tool in your IP arsenal. Talk to your attorney and consider whether this route is advisable for your particular situation. As always, feel free to get in touch if you’d like to discuss!
Photo © 2013 Dave Bourgeau
Blog Post © 2019 Kolitch Romano LLP
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.