Continuation patent applications are a valuable tool for businesses and startups to protect important technologies. A continuation application is basically the same patent application (i.e. same written description and same drawings) as a prior filed patent application but has different claims seeking a different scope of patent protection. Once you receive a Notice of Allowance from the U.S. Patent and Trademark Office (USPTO) on your patent application, you will need to consider whether you want to file a continuation application prior to the issuance of the patent. With important technologies, a patent owner may find it beneficial to file a series of continuation applications for the reasons discussed below.
if you do not file a continuation application prior to the issuance of your patent, you will most likely be limited to the patent protection offered by your original patent application which may not be broad enough or it may be easily designed around by a competitor. To avoid limiting your scope of patent protection to your original patent application, you will want to consider filing at least one continuation application for the following reasons:
- Seek Broader Claims. Sometimes a USPTO Examiner will allow narrower patent protection than you believe you are entitled to but you want to get patent protection as soon as possible while preserving the ability to seek the broader patent protection you believe you are entitled to. In this scenario, it may be beneficial to (a) accept the allowable claims without creating a messy file history at the USPTO and (b) filing a continuation application to seek the broader claim protection you believe you are entitled to.
- Seek Narrower Claims. This may be counterintuitive, but sometimes your original application will receive a Notice of Allowance on relatively broad claims that may be easier to attack for invalidity by a competitor. In this situation, you may want to file a continuation application to seek narrower patent protection that would still focus on the heart of your invention but would be difficult to invalidate.
- Use Different Claim Strategy. There are many different ways to claim the same invention (e.g. structure claim vs. a method of use claim vs. a method of assembly claim) and different ways to word the claims which can potentially provide different (and potentially broader or better) patent protection. A continuation application will give you the opportunity to file claims that have a different claim strategy than what you originally applied for with the advance knowledge of the what prior art the USPTO Examiner will most likely use this time.
- Claim Allowable Subject Matter Incrementally. Instead of trying to get every ounce of patent protection out of a single patent which can be very difficult, using a continuation application strategy will allow you to claim allowable subject matter incrementally which may be more palatable for the USPTO Examiner.
- Cover Competitor’s Product. If you have a competitor that has designed their product to avoid your initial patent(s) on the technology, a continuation application gives you the opportunity to seek patent protection that will cover a competitor’s product — even if the competitor successfully “designed around” your prior patent(s) on the technology.
- Cover Evolving Technology. As your technology evolves, you may be able to seek patent protection with a continuation that covers future advances you make. The patent protection offered by the continuation application would be in addition to — and most likely broader — than the patent protection you directly seek in a later filed application for the technology advance you make.
- Create Uncertainty for Competitors. Your competitors are able to review and “design around” your issued patents. With a continuation application, you will be able to mark your products with both “U.S. Patent No. 10,000,000” and “Patent Pending” which will leave your competitors guessing as to what scope of patent protection your pending application is seeking. In addition, a continuation application can be filed with a Non-Publication Request (assuming no foreign applications applied for or intended to be applied for) so your competitors will not be able to see the claims you are seeking patent protection for in the continuation application or even the prosecution history of the continuation application at the USPTO.
- Protect Against Challenges to Patent at USPTO. There are a number of potential challenges to an issued patent that a competitor can make at the USPTO such as Post Grant Review (PGR) and Inter Partes Review (IPR). A continuation application will allow you to seek a new scope of protection in view of ongoing or threatened challenges to a patent at the USPTO by a competitor.
- Valuable Patent Litigation Strategy. A pending continuation application can be valuable when you are involved in patent litigation (or contemplating patent litigation) since it allows you to draft new claims to avoid any newly discovered prior art that a competitor presents to you.
- Increase Value of Patent Portfolio for Purchaser. If you sell your patent or your business later, a pending continuation application will give the purchaser the opportunity to seek patent protection that meets the objectives of their business model and therefore increases the value of your patent portfolio to the purchaser.
- Changing Law. The law is always changing with new legislation and new court decisions (especially with software related technologies). Continuation applications can be a useful tool to address new legal developments with new claims that avoid or take advantage of the change.
- Keeping Options Open. A continuation application is filed prior to the issuance of the parent application, so filing a continuation application is similar to an “options contract” to seek new claims for any reason in the future.