Why one utility patent might not be enough
Obtaining a utility patent is no minor accomplishment. You likely had to respond to at least one Office Action and overcome claim rejections on multiple grounds. While congratulations are in order, you do not want to overlook the risk that competitors will find ways to avoid your patent. There is a short window of time to take action that you cannot regain once it passes. It’s understandable that you may not want to invest in any further patent filings after all the time and expenses spent on your first patent, but you should at least assess if one patent is sufficient to protect your concept. This evaluation requires an analysis of a critical question . . .
How can competitors design around your claims?
Every utility patent has at least one independent claim. Since the USPTO filing fees for a nonprovisional patent application covers up to three independent claims, it is common to see granted utility patents with a handful of independent claims. Patent savvy competitors will focus on your independent claims and zero in on each element recited, i.e., the claim limitations.
If your patent has only one independent claim, then competitors might be able to avoid infringement by designing around this single claim. Having multiple independent claims will strengthen your patent rights. You can build an arsenal of independent claims by filing child applications known as continuing applications.
What are experienced competitors looking for in your IP?
Competitors familiar with patents will carefully review your independent claims (or have their patent attorneys do so) to find at least one claimed feature they can omit in their competing product. Whether or not they have strong arguments for noninfringement will depend upon several factors, including the claim language and file history of the patent application resulting in the issued patent (e.g., Office Actions, claim amendments, arguments regarding prior art, etc.).
Not all competitors are sophisticated in IP. Some will outright copy your patented product or make a minor design modification on the (mis)assumption that such a change will avoid infringement. If your business competes in an industry filled with IP rights, then you should assume competitors will be studying your patent if your patented product does well.
When do you need to take action?
Also known as a child application, a continuing application must be filed before the parent application is granted. Once the parent application is granted, it will be too late to file any continuations. A common uncertainty for patent owners is the lack of foresight to anticipate all the ways in which competitors will attempt to design around the first patent.
A simple temporary solution is to file a continuation application with a placeholder claim that will be replaced with more definite claims in the near future. When competitive products crystallize, the patent owner can file a Preliminary Amendment to replace the placeholder claim with new claims that capture the competitive products. Keep in mind that the new claims must still find support in the specification.
From one patent to a patent portfolio
By filing one or more continuing applications, you will build a patent portfolio that will serve as a moat for your innovation. Whereas arguing noninfringement or invalidity over a single patent might be simpler, it will be far more difficult to avoid a family of patents.
Imagine, for example, you obtained four related utility patents, each with three independent claims. You now have an arsenal of 12 arrows in your quiver to assert against competitors. Perhaps a particular competitor might be able to dodge three claims, but avoiding all 12 may prove to be very challenging. Such a patent owner will gain leverage in reaching a desired business result, whether that may be a cease-and-desist or a licensing agreement producing royalties. Whatever the result may be, accused infringers might put up less of a fight in defending against a portfolio of patents.
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