Maiorana, P.C.

Continuation Patent Practice

Patent Continuation Practice

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What is a continuation application?

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Chris: A continuation patent application is normally a second, third, or fourth application filed using the same specifications and drawings as a parent application. If you use the same specification and drawings, your continuation application gets the same filing date as your parent, and then you write new claims for the continuation. It's a second application based on the same subject matter as the parent application.

Are there types of continuation applications?

Chris: There are. A true continuation is when we use all the text from the parent application and all the figures with no changes. There's a situation where you can add some figures or description in your specification. That's called a continuation-in-part. Say you had 10 figures with specification description of those figures, and you wanted to add two more. The two more figures would not get the earlier filing date because those are a new matter. However, the 10 figures would get the earlier filing date and that's called a continuation in part. Both applications under the new law are filed under Rule 53(b).

Why not just file a new application instead of a continuation?

Chris: The main reason is you get that earlier filing date which can be important if there's prior art you don't want used against your new application, or if you offered your invention for sale after the first application was filed, but more than a year before your continuation application was filed. If you get that earlier filing date, it’s helpful on your on-sale bar issue and your filing date issues for prior art.

Why would a client need more claims on the same specification?

Chris: There are a number of strategies at play. One core issue is the continuation application normally lets you get broader claims than the parent application. That's part of the bartering system with the Patent Office. The patent examiner has limited time to examine these things. They tend to be a little bit picky about what they're going to allow in a case. The patent examiners always have a concern whether they're going to allow something their supervisor thinks shouldn't be allowable -- then get a negative credit on their review. If you have a continuation application that is a familiar case with the patent examiner, he picks up his strategy where he left off and says, "Okay, so I allowed the case with these limitations. Now they're taking out these other limitations. I can allow that one too." So it is generally easier to get broader claims allowed in a continuation.

It's almost like a poker game with these examiners where you’re moving the line that's more valuable to your client; getting a broader claim on the same subject matter. There are other situations where a competitor comes up with a product you know in your heart is infringed by your claims, but they use a little bit different wording on some things than you do. You can target their commercial embodiment if you have an early enough filing date. You can target their embodiment and make claims that cover where you use their exact words.

Then the other is - if you have a licensing portfolio and you want a lot of patents that are very dense in a certain subject matter, where you'd want a spectrum of claims in that subject matter to enforce against a particular competitor.

Is there a limit on how many continuations that can be filed?

Chris: There's no limit. A good practice is to file at least one or two continuations to push the Examiner for broader material. If you're going to get into a licensing portfolio, you can do quite a few follow-up applications to knock down certain areas. So, when you sell a small company, the IP portion of your company has a certain amount of value. You get into this bean counter mentality. They're going to look at your quality patents, but they're also saying if one company has two or three issued patents, they don't think that's as good as 20, 25, or 30 issued patents. The continuations are a way to get your portfolio numbers to compare well with other portfolios. That’s where a continuation application attorney can really help.

Have your clients benefitted financially from filing continuations?

Chris: I think so. We've had a few clients get rather attractive sales deals on their companies. There is a large due diligence portion of the patent portfolio and it helped them a lot to get a much bigger number on their sale of the company. Also, we had a company that went to litigation to enforce a patent. They had two continuations, and most of the unexpected turns in the litigation were covered by claims that were in the follow-up continuations. The client saved millions of dollars.

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  • Chris Maiorana
  • January 2017
Tags: Continuation Application Attorney, Continuation Patent Application

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