Continuing Patent Applications

Posted Saturday, June 13, 2015.

Success! Your patent application was approved by the patent office and is scheduled to issue in the next few weeks. Congratulations… and you should really consider having an additional application filed for your invention before your first patent issues. If you are bringing the invention to market as a product for sale, or if you are disclosing the invention to potential licensees, an additional application is an inexpensive way to ensure you can get additional patent coverage in changing market conditions.

To better understand why, we need to remember that the scope of coverage that your patent offers is specified by the patent claims. Patent claims are recited at the very end of the patent document and are one sentence descriptions of intellectual property for which you are granted the exclusive right in your patent.

The patent claims are analogous to a legal description for a piece of real estate. A legal description for real estate often references a survey map which is stored in a county recording office, but it can also expressly call out boundary lines for the parcel of real estate using latitude and longitude, or some other means of expressing geographic lines. Within those boundaries lies the real property for which the owner has the exclusive use.

Patent claims are similar in that they describe the boundaries of the intellectual property which the patentee has the exclusive right to make, use, and sell. Patent claims are slightly different from legal descriptions of real estate, however. While legal descriptions for real estate generally use standardized language, patent applicants (or their representatives) get to choose their own language when submitting patent claims.

Your patent attorney will do the best job possible getting a patent claim approved by the patent office which completely describes your invention. However, once your patent issues and your competitors become aware of the patent, they will be reading the patent to see if they can figure out a way to “design around” your patent. In other words, they will see if there is a way to design their competing product so that they don’t infringe your patent.

A competitor may alter a component of their product so that it no longer includes something essential to your patent claim. There are various legal doctrines which will still protect a patentee in this situation, such as the Doctrine of Equivalents (read more about the Doctrine of Equivalents here). In short, at trial the result should be that if the accused infringing device performs substantially the same function in substantially the same way to yield the substantially the same result, it still infringes even if the patent claim in question doesn’t exactly cover the device.

But litigating a patent is very expensive, much more so than obtaining a patent. Removing questions that need to be resolved at trial is highly beneficial through reducing the expense of patent litigation. And one way to negate the question of whether an accused infringer is selling an infringing device, even if it isn’t exactly described by the patent claims, is to obtain an additional set of patent claims which do exactly describe the accused infringing device. That makes it a shorter trial – or even obviates the trial entirely once the accused infringer sees your new claims and decides to settle.

The manner of obtaining that additional set of patent claims is to file an additional application in the patent office for the invention – one which uses language which fits on the accused infringing device more precisely. The cost of obtaining a second patent which reads right on the accused infringing device is almost trivial when compared to the cost of litigating the issue. When you bring that second patent to court, there are many fewer issues to litigate, significantly reducing your cost to enforce the patent.

There are limits to this strategy however. The first is that the patent claims in your second application must be able to be supported by the description of the invention contained in your first application. Simply put, you can’t claim an invention that you didn’t have in mind and disclose at the time the first application was filed.

The second, and really critical point, is this: once your first application matures into an issued patent, the applicant loses the right to file an additional application for that invention. Any additional application, called a “continuing application,” has got to be filed prior to issuance of the original patent. (In practice, “prior to issuance” has meant “no later than the day of issuance.” Recent court decisions suggest, however, that filing the continuing application the day the original patent issues may not be sufficient. Filing no later than the day before is becoming prudent.)

When your patent issues, if you already know of a competitor that has come to light since the application was first filed, you definitely want to have the patent attorney look at that competitor’s product and file a continuing application with patent claims that better describe that competitor’s product. In fact, you may want to take advantage of the patent office’s Track One program (read more about Track One here), and have the patent that enables you to better ward off your competitor in a matter of months instead of the normal three year timetable.

By the way, if this seems like a shady and possibly illegitimate practice, know that the courts have said there is nothing wrong with attempting to obtain a patent which better reads on your competitors’ devices which came after yours, provided the claims you are trying to get are based upon on your original filing. See Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867 (C.A.F.C. 1988) (read the Kingsdown decision here) (“It should be made clear at the outset of the present discussion that there is nothing improper, illegal or inequitable in filing a patent application for the purpose of obtaining a right to exclude a known competitor’s product from the market; nor is it in any manner improper to amend or insert claims intended to cover a competitor’s product the applicant’s attorney has learned about during the prosecution of a patent application.”)

What happens if your patent is about to issue and you are unaware of any competitor that might enter your field? File a continuing application anyway! Re-filing an application which was already drafted is not terrifically expensive. Your attorney will likely advise at least submitting a different set of patent claims to keep the examiner from merely copying/pasting work done previously in rejecting the claims, but other than that the cost to re-file is essentially only the filing fee and a nominal attorney charge to get the application on file.

Where you are unaware of a specific competitor lurking, but where it is at least possible that one may come to light, re-file the original application as a continuing application without the Track One surcharge. For likely a couple of years, should such a competitor bring something to market that is close to yours, you will have the ability to change the pending patent claims to describe the competitors product.

Many organizations consider continuing patent applications an essential part of their strategy to protect intellectual property. It is not unheard of for a company to keep filing continuations to keep the subject matter of the original application “alive” at the patent office throughout the entire term of the original application. Any patentee who is planning to bring the invention to market, or is actively selling it or seeking a licensee, really ought to have a continuing application filed as the issuance of the original application nears.

Just remember – and this is the key takeaway – your ability to file a continuing application goes away upon the issuance of the original application. If you don’t have a continuing application filed and a competitor is subsequently identified, your only avenue for asserting your exclusive right to make, sell or use your invention is the patent that you have. If the competitor has done something sneaky so that their copy no longer literally infringes your patent, you’re still protected, but it’s likely going to be a more expensive road than it could be if you had a continuing application pending.

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