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A continuation application is a flexible tool to support business objectives. One must remember that patents are both an offensive and defensive tool for an organization. An issued patent allows the applicant or company to prevent a competitor from practicing the invention covered by patented claims and a pending patent offers a company the ability to modify claims to defend the company’s position with respect to a competitor. As you read the following remember you do not have to wait until your patent application is allowed. You can use continuations to react to business, scientific, or legal developments during the life of your patent or during prosecution of your patent application.
Reasons you should consider filing a US continuation patent application as part of your intellectual property strategy:
- Multiple inventions. This is a simple concept. The USPTO restricts a patent to claim only one invention. However, any well written application should be drafted to cover multiple inventions. Therefore if your application has multiple inventions disclosed a patent can only have claims that capture one invention. To capture the other inventions the claims must stand in their own application and a continuation or divisional application can capture those claims.
- Claims strategy. Patent applications many times have claims that are narrow with respect to the invention. A continuation application provides a means to seek broader claims to protect the invention. Continuations can also be filed to cover alternative embodiments of the invention to block alternative designs.
- Offensive vehicle. Continuation applications can also be an offensive vehicle. For example, the applicant can file a continuation that has claims covering a competitor’s proposed or future product. If the product was disclosed in the parent application then the applicant can amend the claims to cover the proposed or future product.
- Defensive vehicle. A continuation application with broad claims is a defensive instrument and disincentives potential competitors from copying a product and therefore acts as a deterrent. A continuation application is also useful if an applicant is engaged or intends to engage in For example, a pending continuation application allows you to navigate around the findings or outcome of a lawsuit. The pending continuation can be amended to incorporated new claims to avoid prior art or maintain the franchise for your invention. An issue patent can only have the claims narrowed whereas the pending patent application can provide the applicant the ability to obtain board claims which are more valuable.
- A continuation application can be a means to accommodate evolving technology or changes to the law . Since technology and the law are constantly changing a pending continuation application can be amended to have claims covering new technologies or new legal developments such as the Supreme Court’s decisions in Myriadand Alice as long as there is support in the original parent application.
- Maximize value. A patent might be sold or licensed in the future. The objective in most transactions is to maximize the return on the sale of the asset. By maintaining a continuation application one can maximize value by allowing the purchaser or licensee to use the continuation to pursue new objectives. A pending patent provides a purchaser with potential to expand their holdings whereas an issued patent provides a purchaser with defendable property.
- Defer decisions or costs. A continuation application can be used to delay prosecution by restarting the examination timeline and keeping the original priority date by abandoning a patent application and filing a continuation application with similar claims.
Remember that a continuation application must be filed before the parent application issues as a patent. A continuation application provides the applicant or company options to pursue new, additional claims in the future to support a robust patent portfolio. The applicant or company should insist that their applications are draft to include multiple defensive, offensive, fallback, and alternative positions.
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