Continuation in Part Patent Strategy

Why Publish Patent Applications at 18 months

The increased use of a Continuation-In-Part strategy is really a response to the fact that patent application after 18 months.  Last issue, I discussed patent pending and why most inventors should file form, PTO/SB/#5 form, Non Publication Requests under 35 U.S.C. 122(b)(2)(B)(i)  www.uspto.gov/web/formssb0035.pdf  along with your patent application. 

The question is why did the patent office switch to publishing applications after 18 months when that change causes problems for individual inventors? The reason is that the USPTO (Unites States Patent and Trade Office) is moving toward working with the rest of the world to develop an international patent, and publishing patents after 18 months is the norm in Europe and Japan.

There are some other advantages of 18 month publication, inventors can now receive reasonable royalties in the period between the patent being published and the patent being issue, while without publication inventors can’t collect a royalty until the patent is issued.  It also puts a patent into prior art more quickly, so the patent office examiners will know about the patent application when reviewing other patents. This can help prevent two people getting somewhat similar patents.

Of course the drawbacks to individual inventors, who rarely care about foreign patents, is that people can design around the patent application once its published, cutting the benefit of the unknown patent claims offered by patent pending status, and it also gives individuals the rights to dispute your patent claims before your patent is filed. The most common dispute is that other prior art exists prior to the inventors claim.  (Prior art is a term used that describes any public disclosure of similar ideas, which includes other patents, foreign patents, press releases and the offer for sale of other products.)

What is a Continuing Application?

“Continuing applications” is a common term related to patents.  All patens start with an original application where a filing date is established. If that original application is later used to establish the filing date of a later filed application it becomes know as the parent application and the subsequent application as a continuing application.

There are several type of continuing applications.  1) straight forward continuing applications which only require that the patent claims be fully supported by the parent applications claims, and require that one of the original inventors must be on the new application.  2) divisional applications, where the patent office decides that a patent covers two inventions rather than one and orders the patents to be split into two patents, both with the original patent date (or the inventor may proceed with only one of the inventions). 3)  Continuation-In-Part which includes the original patents disclosure, plus additional disclosure and claims.

Continuation-In-Part claims differ from Continuing claims because they are additional claims that are related to the original application, while a Continuing claim depends on the original patents claim but it is a different or separate claim.  For example, if you had the original patent for a bicycle, and it was still in force, and you wanted a patent for a bicycle built for two, that patent might require you to also hold the original patent for bicycles (if was the patent was still in force) before they would issue you a patent for a bicycle for two.  Therefore this would be a Continuing Claim.   If on the other hand you had a patent on the bicycle for the use of transportation, and wanted to add a disclosure that the bicycle could also be uses as stationary exercise device, this would probably be Continuation-In-Part claim.

This issue is complicated for the best results you should always consult your patent attorney before determining how you use a continuing patent strategy.  If you can’t afford a patent attorney, as we mentioned in our first article, this can be a low cost strategy that you can do yourself, but keep in mind, you probably won’t end up with a good patent with any value, but you can keep the competition guessing for a few years.

They keep your patent pending status longer if your patent is published.  If you only put part of the claims in the first application, and then add a Continuation-In-Part claim you will extend the actual time before a potential competitor can actually see what your patent is and design around it.  The drawback to this strategy is of course the cost.  Your patent attorney will have to do more work to execute this strategy. The cost is why this strategy is used more by companies than individual inventors.

You can also sometimes use this strategy as a guard against a competitor designing around your patent.  If a competitor upon seeing your application and designs around it, you may be able to modify the claims of your continuing application to ensure the competitor is infringing on your patent.

Another tactic companies use to gain the same benefit is to file very broad claims in their application, ones they know the patent office won’t accept.  The result is the broad patent claims application is published and then the company will negotiate with the patent office, maybe over three to four years, and sometimes longer, before their patent is issued.  Again, the competitors are not sure what the Patent Office will approve and the result is you still enjoy the benefits of patent pending.  Again the drawback is costs; your patent attorney costs will be much higher pursuing this strategy.

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