IP Law Bulletin

Here are ten reasons you should consider filing a US continuation patent application as part of your intellectual property strategy:

1. Multiple Inventions. The USPTO only allows a patent to claim one invention. However, patent applications are often drafted, or determined by the USPTO, to cover multiple inventions. In such cases, the USPTO may issue a “restriction requirement,” dividing up the inventions and asking the applicant to select one for examination. The other inventions can be pursued in a continuation application called a “divisional.”
2. Broader Claims. Sometimes, patent applications are allowed with claims providing only “narrow” coverage. For example, an applicant may choose to establish an immediate defense by expediting claims to a specific embodiment of an invention, or accepting an Examiner’s offer to allow a subset of the pending claims. In such circumstances, a continuation application is useful follow-up for pursuing “broader” protection. Continuations might also be filed to cover alternative embodiments of the invention or block design-arounds.
3. Go On the Offensive. Continuation applications can also be used offensively. For example, one can file a continuation with claims covering a competitor’s product as long as it is described in the original parent application.
4. Creating Uncertainty. In addition to building clear defensive and offensive positions, continuation applications (usually with broad claims) can be used to create uncertainty around the final scope of patent protection and provide a deterrent to competitors.
5. Evolving Technology. Technology is constantly evolving. A pending continuation application can provide a vehicle for drafting claims covering future advances, as long as they are supported in the original parent application.
6. Law in Flux. Similar to technology, the law is in a constant state of flux. Legal developments, such as the Supreme Court’s decisions in Myriad and Alice limiting what is eligible for patent protection, have fundamentally altered the patent landscape. Continuation applications provide a tool for addressing legal developments, for example through new claims that work around, or exploit, the changes.
7. Litigation. Continuation applications are standard tools for patentees engaged in, contemplating, or expecting litigation. For example, a pending continuation application allows you to react to the lawsuit’s outcome – like drafting new claims to avoid newly discovered prior art.
8. Maximize Value. When a patent might be sold or licensed in the future, maintaining a continuation application can maximize value by allowing the purchaser or licensee to use the continuation to pursue their objectives.
9. Defer (Decisions, Costs). Sometimes, it is necessary to defer a decision or cost. Continuation application can be used to delay prosecution, for example, by “restarting” the examination timeline by abandoning a patent application in favor of a continuation application with the same or similar claims.
10. Keep Your Options Open. A continuation application must be filed before the parent application issues as a patent. Therefore, filing a continuation application can be viewed like purchasing an “options contract” to pursue new, additional claims for any reason in the future.

Savvy applicants will consider continuation applications as a valuable tool throughout patent prosecution, and will draft their applications to include multiple defensive, offensive, fallback, and alternative positions.

Final Tip: You don’t have to wait until your patent application is allowed – use continuations to react to business, scientific, or legal developments at any time.