People often view Continuation Applications as an opportunity to build their patent portfolio. Corporates with a licensing portfolio can use Continuation Applications as tools to achieve broader coverage for their invention or technology and increase their patent count, adding value to their portfolio. Conversely, a non-selective and aimless use of Continuation Applications is usually expensive and unproductive. It can lead to substantial IP costs without making any significant and quality addition to the portfolio. Thus, it is imperative to have a framework in place for efficiently strategizing the Continuation Applications.
Why Does a corporate file a Continuation Application (CA) / What benefits a corporate gets after filing a CA?
Continuation Applications allow corporates to obtain multiple patents that cover different aspects centred around a single invention. They are strategically used to increase the size and scope of the patent portfolio and thereby build a diversified portfolio for any corporate.
Maximizing value for a purchaser of the patent portfolio
In the case of a patent portfolio that can be licensed, a co-pending Continuation Application can allow the purchaser to modify the coverage of the invention according to their business requirements. Thus, it increases the value of the IP assets.
Broader coverage for invention and appropriate use of unclaimed embodiments
Continuation Applications provide an opportunity to broaden or modify patent coverage for the creation.
Further, the Continuation Applications also allow seeking patent coverage for the unclaimed embodiments not covered in the parent application. Take an example of a parent application for which the inventor, the patent attorney, and the drafter of the application may harvest various embodiments and modifications during the patent drafting stage. Although these modifications and additional embodiments related to the invention are included in the Specification, claims of the parent application do not mandatorily capture them. This situation could be because of different reasons like the initial focus of parent application towards the primary idea and specific embodiments or due to a restriction towards a total number of claims at the filing stage, etc. Thus, during the allowance stage of the parent application, filing the additional application(s) using such unclaimed embodiments (if not anticipated or rendered obvious by known prior arts) may allow a broader patent coverage for the single invention and its related concepts, interpretations, and inventive scenarios.
Protection against Design around made by competitors
Continuation Applications not only allow the Applicant/Assignee to target the competitor’s existing products but also allow the Applicant/Assignee to modify the portfolio coverage in case the competitor changes the product or brings an advanced iteration of the product.
Maintain Pendency of the subject matter
Continuation Applications allow organisations to cover advancements in technologies where the future trends are highly uncertain and the technology is ever-evolving. Let us consider that for corporate, allowable claims of a parent application cover features of a product’s first iteration and think of a scenario where the corporate wants to expedite the launch of this product to the market. Thus, in this situation, it is preferred for the corporate to:
- Get the parent application granted to smoothly carry forward the launch of the product’s first iteration, and
- File Continuation Applications to cover future iterations.
Further, with due consideration of the advancement in the technology covered by the parent application, a Continuation-in-part (CIP) application can also be filed to track and protect the future trends of the technology. This situation may further help the corporate to maintain a chain of patents well aligned with incremental technology advancements.
Safeguarding protection of equivalents
The Applicant can judiciously use Continuation Applications to safeguard the doctrine of equivalents by providing a mechanism for protecting equivalent variations of the original invention. Specifically, Continuation Applications can provide a broader protection base for covering a more comprehensive range of potential infringing products or processes, making it more difficult for others to circumvent the patent by making only insubstantial changes. Further, at a later stage, this can also be beneficial in case of any infringement-related issues with competitors.
Change of Examiner
A thoughtful refinement of the language of the claims in the Continuation Applications may lead to a change in the Examiner following the classification process of the Art units. So, suppose there is a severe deadlock with one Examiner for a patent application. In such a scenario, the Continuation Applications may provide an opportunity to look for an Examiner change for the same invention and, further, seek the allowance using arguments/amendments that could align with the new Examiner.
Key points to be considered by the corporates or Attorneys before filing Continuation Applications
- Scope of allowable matter claims concerning intended invention coverage — Sometimes, shares offered as allowed/acceptable by the Examiner may not be central to the invention's novelty.
Now, whether these allowable claims should be used to take a patent grant, followed by filing a Continuation Application to include a desired invention coverage. We do not have a fixed answer to this question because different corporates may have other preferences, as discussed below -
- Some corporates may choose to accept the allowance offered by the Examiner to get the grant for the biased coverage and file a Continuation Application to avail of one or more of the following benefits:
- to gather an immediate defense by having a license on one aspect of the invention, and then the Continuation Application can cover a comparatively broader aspect of the invention (if the broader aspect is not anticipated or rendered obvious by known prior arts of the parent application),
- to cover the desired features of the invention targeting a competitor's product or the latest iteration of the product,
- to protect the unclaimed embodiments of the invention,
- to maintain the pendency of the application for covering future iterations of any product by competition and to cover products that have come up in the market after the issuance of the parent application, and
- to maintain the pendency of the application for the technologies that are evolving very fast and where future trends are highly uncertain.
- Conversely, some corporates may prefer something other than allowance over claims that do not include desired features. They would instead continue with the parent application, lowering the chances of filing the Continuation Application. Accordingly, they may lose out on the benefits discussed above.
- Count of RCEs already filed for an application — Some corporates enforce strict limitations on the number of Request for Continued Examination (RCE) filings for each application, and they aim to terminate prosecution after a predetermined number of Office Actions. Those corporates will be okay with closing prosecution of the current application by accepting a grant on the claims that are either narrow or not very significant to the novelty of the invention and will further file a Continuation Application to focus on the desired coverage.
On the other hand, some corporates are very particular about the scope of the independent claim, and they would want the allowed claims to cover only specific features. Accordingly, they would instead choose a lengthy prosecution and avoid filing the Continuation Applications to much extent.
- 'Importance-based' classification of inventions by corporates — Corporates usually bifurcate their inventions as 'significant/highly significant' or 'not so significant'. This classification is primarily done based on the importance of the invention in the technology space and the view of competitors' portfolios. As the filing and prosecution of a Continuation Application incur considerable costs, this classification also impacts the strategy of filing the Continuation Application for any given application. Accordingly, the corporates would prefer filing one or more Continuation Applications for an invention classified as 'significant/highly significant' to avail most of the benefits discussed in the above section.
- Pressing need (urgency) to get the grant on desired coverage of the invention keeping in mind the commercial aspect — As already discussed, often the parent application receives a grant based on the allowable matter, which may not be very significant as far as the commercial aspect is concerned and a Continuation Application may be filed to cover the desired features. In response, depending on the backlog of the art unit, USPTO will take enough time (maybe 1-2 years) to issue the first action for the Continuation Application. Thus, by filing the Continuation Application in this scenario, allowance of the desired features that cover the commercial aspect is unnecessarily delayed, and even if the patent grant is given to the Continuation Application at a later stage, the actual enforceable term for the product gets reduced. Further, the delayed grant of the Continuation Application (covering the commercial aspect) may also lead to a missed opportunity to sue third parties in the event of discontinuing the infringing product while getting the grant for the Continuation Application or otherwise.
Thus, one must judiciously use the option for the Continuation Application for critical applications. A proposed solution here could be to carry on with the prosecution of the parent application keeping in mind the commercial aspect, and simultaneously file the Continuation Application to avail other benefits discussed above and specifically to cover the unclaimed embodiments or the allowable matter which may not be very significant as far as the commercial aspect.
- Technologies with highly uncertain future trends and the Dynamic nature of competition's portfolio — Corporates with a licensing portfolio or those with a highly competitive technology space may strategically use Continuation Applications to avail the benefits discussed above. For instance, they may keep the application pending by filing a Continuation Application to expand the patent portfolio quickly in response to their competitor's activities and to cover aspects that become commercially important after the issuance of the parent application.
- Presence of clutter in the allowed claims of application — At the time of issuance of Notice of Allowance (NOA), corporates should carefully analyze the file wrapper or prosecution history to identify certain claim features (clutter) that they added to independent claim(s) throughout prosecution. These limitations do not significantly contribute towards the novelty of allowed claims, and corporates can eliminate them in a Continuation Application to avail a broader coverage of the invention. This situation is a convenient approach to get a more extended version of the already allowed features.
- Standoff with the current Examiner — Although the argument is powerful for specific applications, it seems complicated to convince the current Examiner that a Continuation Application can be filed by refining the claim language. With the Continuation Application, there is a chance of getting a different Examiner based on the classification process of claims, and the new Examiner may see the invention more favourably for the corporate. However, one should only try this situation for critical applications where too much is at stake, and one desires to explore all available options to obtain an allowance for the desired features.
How can Outside Counsel (OC) help corporates in Filing Continuation Applications
A well-defined framework based on which an Outside Council (OC) strategises the filing of Continuation applications can play a pivotal role in strengthening corporate IP portfolios. OC should exercise the below steps to propose and manage filings of Continuation Applications.
- For every application issued with a Notice of Allowance (NOA), OC must:
- Analyze the file wrapper to identify claimed limitations added over the prosecution cycle that do not significantly contribute towards novelty and eliminate them in the Continuation Application.
- Analyze the global dossier and foreign prosecution intelligence to seek opportunities for filing Continuation Application or suggest modifications in the claim set to maintain a more stable and uniform portfolio.
- For the Continuation Applications, OC should refine the claim set based on the following:
- A target, a new product from the competition, or a further modification or iteration of the product by the competition. The corporates and the OC can contribute to identifying the target or the new product.
- Analysis of Prior arts cited for the parent application.
- OC should also examine the possibility of a Double Patenting rejection for the Continuation Application. The (non-statutory) Double patenting rejection introduces a requirement of filing a Terminal Disclaimer, and in case the Terminal Disclaimer is filed for any Continuation application, both the parent and the continuation applications are forever tied together when it comes to licensing of the individual patents. Accordingly, if one is being licensed, the other must be mandatorily licensed. Thus, claims of Continuation Applications should be judiciously drafted and refined to avoid Double patenting rejection and thereby avoiding any restriction on the portfolio about the licensing deals.
- OC should ensure the timely filing of a preliminary amendment for the Continuation Applications for which placeholder claims were previously filed. The placeholder claims (i.e., original claims of parent application) in the Continuation application are generally used by IP professionals to timely file the continuation application before issuance of the parent application. A failure to timely file preliminary claim amendment (before first office action on merit) can lead to a refusal from the Examiner to change the scope of the claims once the prosecution starts, jeopardizing the whole purpose of filing the Continuation Application.
Reasonable consideration of the above facts helps draft well-researched and high-quality claims for Continuation Applications, resulting in compact prosecution and early allowance of the Continuation Application. This situation will also allow corporates to avail of maximum benefits from the extended portfolio created by the Continuation Application, as discussed above.
We at EVALUESERVE work on a well-defined framework, i.e., consider all the points mentioned above and facilitate our clients and Attorneys with several benefits of the continuation applications. EVALUESERVE also had a proof of concept with multiple corporates to demonstrate the requirements and benefits of introducing a similar framework in the IP ecosystem.
Case Study 1
Evalueserve developed a framework for an existing Fortune 500 client and established a dedicated team to recommend and strategize filings of Child Applications for them. As a result of executing the workflow defined in the framework, around 35 percent more Continuation Applications were filed for a client in the last three years, resulting in 50 additional patents.
Case Study 2
A hi-tech client approached Evalueserve requesting due diligence on patent applications handled and prosecuted by vendors/ partner law firms. The client wanted to seek opportunities for Portfolio enhancement by determining the feasibility and necessity of filing child applications at a stage when a Notice of Allowance (NOA) is issued for filed patent applications. Evalueserve executed the framework to smartly analyze the parent applications at the NOA stage for recommending and strategizing filings of Child Applications for them.
The client received the following benefits from executing a structured workflow for several years while considering the above-discussed points:
- A well-defined and structured framework for strategizing the filings of child applications.
- Targeted filings of child applications resulted in portfolio enhancement and alignment of the company's IP with business objectives.
- Significant cost benefits due to selective/defined approach for filing applications
- Helped in improvising licensing opportunities
- IP leads got clear visibility about the quality of prosecution activities performed by specific vendors or partner law-firm, which helped them to make effective vendor management decisions.
Please contact us if you want to learn more about Evalueserve's vast experience running this framework effectively.