The world of patents is a complex and ever-evolving landscape. For businesses seeking robust intellectual property protection, the strategy of filing continuation applications has long been a key tactic. These allow applicants to pursue additional claims in a related patent application, often building upon the initial disclosure. However, the landscape of patent continuation strategies is facing significant scrutiny and evolving due to various factors. Navigating this minefield requires a keen understanding of the current challenges and a strategic approach.
By way of background, a patent continuation is a subsequent patent application filed by the same inventor or assignee that claims priority to an earlier, pending patent application. It essentially allows the applicant to continue the prosecution of the same invention or a closely related one, often with modified claims or focusing on different aspects of the invention.
Think of patent continuation strategy as a way to keep the patent application “alive” and to explore different claim scopes or address issues raised by the patent examiner in the parent application; it’s a way to continue the examination of their invention in the patent office, often to address examiner objections or to pursue different claims based on the original disclosure, and is a key aspect of patent prosecution strategy aimed at securing strong and comprehensive patent protection.
Here are some of the strategic uses of continuing patent applications, key issues, and real-world examples of companies grappling with these complexities.
The rise of the Patent Prosecution Highway (PPH) and its impact
The increasing availability and utilization of the Patent Prosecution Highway (PPH) is a significant development impacting patent continuation strategy. The PPH allows applicants to expedite examination in one patent office (like the USPTO) if their claims have been allowed in a participating foreign office such as the European Patent Office.
This has led to a more strategic approach to patent prosecution. Applicants now consider the benefits of PPH when deciding on their filing and patent continuation strategies. The focus can shift towards securing allowance in a PPH-friendly jurisdiction first, using that as a pathway for a more efficient and faster grant in the U.S.
Before the PPH, applicants seeking international protection often filed a U.S. application and then pursued separate applications abroad. Lengthy U.S. prosecution might have led to multiple continuation filings to refine claims. With the PPH, however, an allowance in a foreign office can trigger accelerated examination in the U.S., potentially reducing the need for numerous U.S. continuations.
The PPH also enables applicants to strategically file in offices with potentially faster or more favorable examination timelines, secure allowance, and then leverage the PPH to speed up U.S. patent prosecution. This can reduce the reliance on lengthy U.S. continuations.
For instance, a small biotech startup like BioNova Therapeutics initially filed in the U.S. They later utilized the PPH with the EPO based on allowed claims. This allowed them to secure European patent protection more efficiently, potentially minimizing the need for extensive U.S. continuations.
Heightened scrutiny from patent offices
Patent offices worldwide are under pressure to improve patent quality and reduce the backlog. This has led to increased scrutiny of continuation practices, particularly when perceived as a tactic to indefinitely prolong prosecution or to present significantly different subject matter.
Patent examiners are more likely to issue rejections based on new matter or obviousness if continuation applications deviate too significantly from the original disclosure. For example, a large technology company, InnovateTech Corp, filed a series of continuation applications for a software algorithm. Over several rounds, the claims became increasingly broad, potentially encompassing technologies not fully supported by the initial disclosure. This led to examiner rejections citing new matter and lack of enablement, requiring significant amendments and arguments, potentially delaying the grant of their core patent.
The impact of patent eligibility challenges
The evolving landscape of patent eligibility, particularly in areas like software and biotechnology, adds another layer of complexity to a patent continuation strategy. If the initial claims are deemed ineligible, subsequent continuation applications might face similar challenges, even with amendments. The focus shifts to ensuring the claims are narrowly tailored and meet the evolving standards of patentability.
For example, a medical device company, MedTech Solutions, filed a patent application for a diagnostic method. Due to evolving patent eligibility standards in the U.S, their initial claims faced rejection. Their continuation strategy involved narrowing the claims and focusing on specific aspects of the method that were more clearly tied to a physical apparatus, trying to overcome the eligibility hurdles.
Balancing breadth and specificity
A core tension in patent prosecution is balancing the desire for broad claims that cover a wide range of potential infringers with the need for specific claims that are more likely to be allowed by the patent office. A patent continuation strategy often involves this balancing act.
Filing numerous continuations with incrementally broader claims can be costly and time-consuming. There’s a risk of over-prosecution and potentially weakening the core patent. For example, a consumer electronics manufacturer, GadgetPro Inc., filed an initial patent with broad claims for a new smartphone feature. Recognizing the potential for prior art challenges, they filed several continuations with more specific claims focusing on particular aspects of the feature. This strategy aimed to secure at least some level of protection while acknowledging the difficulty of obtaining very broad claims.
Cost and time implications of a patent continuation strategy
Each continuation application incurs additional filing fees and prosecution costs, and it extends the overall timeline for patent grant. Companies need to carefully weigh the potential benefits of pursuing additional claims through continuations against the associated costs, potential delays, and time to market.
A startup with limited resources, for example, might be more judicious in their use of continuations, prioritizing the most critical aspects of their invention and focusing on a more streamlined prosecution strategy to manage costs and time to market. However, they, like larger companies, have often filed large patent applications that describe more than one generation of their technology, planning to use a “serial” patent continuation strategy to pursue all desired claim strategies.
Addition to these cost considerations, in a notable development for 2024, the U.S. Patent and Trademark Office (USPTO) revealed plans for a substantial increase in fees for continuation applications. Starting January 19, 2025, there are fee increases relating to the timing of continuation applications, with filing continuation becoming more expensive after six and nine years from the earliest filing date in the family, among other things.
Best practices for navigating the continuation landscape
Given these challenges, companies need to adopt strategic approaches:
- Early and thorough disclosure: Ensure the initial patent application provides a comprehensive and detailed disclosure to support broader claims later on.
- Strategic claim drafting: Draft claims with a clear understanding of the invention’s core aspects and potential market applications.
- Prior art awareness: Conduct thorough prior art searches to anticipate potential challenges and inform claim strategy.
- Focused patent continuation strategy: Develop a clear plan for continuation applications, focusing on specific aspects or improvements that warrant additional protection. Avoid filing continuations simply to delay examination.
- Consider alternatives: Explore other prosecution strategies like divisional applications or international filings.
- Seek expert advice with legal business partners: Work closely with experienced IP professionals who understand the evolving landscape and can work with a company and its outside counsel to tailor a prosecution continuation strategy to the specific invention and business goals.
Patent continuation strategy remain a valuable tool for securing robust intellectual property protection. However, the current environment demands a more strategic and nuanced approach. Companies must be aware of the increased scrutiny, the impact of initiatives like PPH, and the evolving patent eligibility landscape. By understanding these challenges and adopting best practices, businesses can effectively navigate the patent continuation minefield and build a strong foundation for their innovative endeavors.
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