Why file a continuation before your patent is granted?

Why file a continuation application before your patent is granted?

I don’t know what I don’t know.” This axiom rings true especially when it comes to the future. Most patent owners cannot foresee all the ways in which competitors will try to design around their patents. So why file a continuation? It’s simple. A continuation gives you a second chance to block the competition.

This is how it works. Filing a continuation application before your patent is granted keeps pendency alive. This strategy enables you to pursue additional claims with the earlier priority date of your prior patent filing. If competitors attempt to design around your first patent, a continuation will give you the opportunity to pursue different claims to stop them.

After your patent is granted, it will be too late to file a continuation application if you do not have any other pending applications.

How will competitors attempt to design around your patent?

Your patent rights are defined by the claims. So the scope of your patent coverage will be determined by the claims allowed by the patent examiner. Businesses in innovation-driven industries will commonly study patent claims of competitors to see if they can omit certain claim elements in their products. There is, in fact, nothing wrong with that. The public has a right to know what you patented. Moreover, fair competition should facilitate the competitor’s right to sell products and services that avoid infringement.

If you are curious to learn how utility patents can be avoided, then you must have a clear understanding of claims and how to analyze the limitations in each independent claim.

Let’s use an oversimplified example to illustrate this concept. Suppose your first and only utility patent application has one allowed claim that comprises three features: A, B and C. So the scope of your one allowed claim is ABC. Competitors now study your patent claim and realize they can make a competing product that has only AB. They can make another product that has only AC and another that has only BC. They now have at least three different versions of products that would not infringe your patent.

Your dependent claims will not help. If the competitor’s product does not have the bare minimum of ABC, then your dependent claims, which only add more limitations, will not broaden the scope of your independent claim.

This is why you should file a continuation application.

Why file a continuation? Because hindsight is perfect.

The problem for patent owners is that they cannot prophesy all the ways in which competitors will nearly copy the patented product without infringing the claims. Only time will tell how clever folks can get in designing around patents. Filing a continuation application with nothing more than a placeholder claim gives the patent owner an opportunity to use that perfect hindsight to pursue new claims that would cover the new competing products.

What is a placeholder claim?

A continuation application can serve as a placeholder, something to reserve your rights while you figure out next steps. In fact, the continuation application may contain a single claim upon initial filing. Afterwards, you can replace the placeholder claim with updated claims after having an opportunity to see how the marketplace is reacting to their issued patent. When it becomes clear how competitors are attempting to design around the claims of the granted patent, the patent owner may then file a Preliminary Amendment to replace the placeholder claim in the continuation application with strategically drafted claims aimed at covering the competing products while still finding support in the specification.

When must a continuation application be filed?

A continuation application is also known as a “child” application while the pending application to which it claims priority is the “parent” application. A child application must be filed while the parent application is pending – i.e., not abandoned or issued.

Avoid regrets: What happens if you fail to file a continuation before your patent is granted?

It’s too late to file a continuation application after the parent patent application has issued. Therefore, it’s critical to plan ahead and time the payment of the issue fee to give yourself enough time to file the continuation.

To err on the side of caution, it’s best to have the continuation prepared and ready to be filed at the time you pay the issue fee. If that is not possible or you prefer to pay the issue fee sooner, then it would be prudent to have to continuation ready within a couple of weeks after paying the issue fee. At a minimum, you can file the continuation promptly with a single placeholder claim and go back with a Preliminary Amendment to add more claims.

Timing is critical. You must file the continuation application while the parent application is still pending, i.e., before it is granted (issue date).

Boost value of your patent portfolio

If you are open to licensing or selling your IP, pending patent applications can be highly valuable. A potential licensee or acquirer wants to know if they have the option to pursue additional claims to enforce against the competition.

Need help with filing a patent continuation application?

Email fixed fee patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to request a flat rate estimate for filing your continuation application.

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