A continuation-in-part patent application is a type of application that incorporates the subject matter of the parent application and additionally includes new subject matter. The inventor can now submit new claims directed to the new subject matter while still being able to claim the benefit of an earlier filing date for any subject matter (i.e., information) that was … [Read more...]
Continuation practice
Continuation practice is a strategy of serially filing follow on patent applications (e.g., continuation, divisional and continuation-in-part applications) to seek broader protection and to preserve the option of recrafting the claims at a later date after competitors have designed around claims of a patent. Browse related articles below.
What is a divisional patent application?
A divisional patent application is a type of application that is filed after an original nonprovisional patent application (also known as a parent application) has been filed. The divisional patent application is filed to pursue patent protection for features of the invention that was included in the original application but not yet claimed. The divisional application is a … [Read more...]
What is a claim of priority in a patent?
A claim of priority gives you the right to claim the benefit of an earlier filing date for your patent application. In this manner, your patent application would have the earliest priority date possible. Prior art that predates the filing date of your patent application would not be prior art. What's the benefit of a claim of priority? As stated above, you can eliminate prior … [Read more...]
Pros and cons of filing a continuation-in-part application
Bottom line The pro for filing a continuation-in-part application is lower downstream costs. The cons are a shortened patent term and also your prior arguments and statements made in the parent application/patent can and will be used against you to narrowly interpret the claim language in a patent maturing from the subsequent continuation-in-part application. To discuss … [Read more...]
Claim of priority to an earlier filed patent application
What is a claim of priority? A claim of priority is a reference in a later filed patent application back to an earlier filed patent application. What is the benefit? The claim of priority allows the later-filed application to enjoy a priority date as of the filing date of the earlier filed patent application and not the actual filing date of the later filed patent … [Read more...]
Best vehicle for broadening patent protection
Bottom line: Filing a continuing patent application is the best vehicle for broadening patent protection (i.e., patent’s claim), not reissue patent applications. In a broadening reissue patent application, the patent's claims cannot be amended or broadened so as to exclude the primary invention described in the patent application under the ‘original patent’ requirement. In … [Read more...]
Extend patent protection and receive more royalties
Bottom line: By filing a string of continuing patent applications and not claiming priority for the continuing patent applications back to a common parent application, the patent owner may be able to extend patent protection for its product. Under U.S. patent laws, an inventor can file a series of successive child patent applications. This is commonly referred to as … [Read more...]
Procuring multiple patents (guns) is good patent strategy
In Institut Pasteur v. Focarino (Fed. Cir. Dec. 30, 2013), the Federal Circuit dealt with three different patents all related to one parent patent application in three different ways. One of the patents did not survive but the other two did. For patent owners, a good patent strategy is to have a multiplicity of patents in the event that not all of the patents or claims of the … [Read more...]