Can I broaden my patent?
Once a patent application matures into a patent, the scope of patent protection, as defined by the patent claims, is fixed. Patent owners generally want to broaden protection if the existing patent does not include claims that stop inventors from competing against the patent owner. The scope of the claims cannot be broadened except for a few, post-grant procedures such as a “broadening re-issue application”. However, the broadening amendments that can be made to the claims in the broadening re-issue application are limited and may be insufficient to secure a claim broad enough to encompass the competitor’s product.
How does the continuation practice work to broaden patent protection of my invention?
Filing serial continuing applications slowly broadens the scope of patent protections
Although the scope of patent protection afforded under a patent is fixed, it is possible to seek broader patent protection for an invention through a continuing application, known as “continuation practice.” Continuation practice refers to a practice of serially filing continuing applications that claim priority to a previous, nonprovisional application to broaden the portfolio of patents. Through this process, the subject matter disclosed in a patent application can remain pending for up to twenty years from the filing of the original application or first, nonprovisional patent application.
This practice enables the patent applicant to obtain a patent for the invention and file continuing applications based on the first patent application to seek additional patents with broader patent protection than was granted on the prior patents. The scope of the claims can be slowly broadened. For example, if a significant limitation was added to the claim of the parent application to secure the patent, the applicant could allow the application to mature into a patent and simultaneously file a continuation application with similar, but broader, claims that lack the significant limitation. Filing a continuation application would therefore enable the applicant to argue for patentability of those broader claims. In this way, the patent applicant does not waste time arguing for broader patent protection in the parent application. The applicant may receive the benefit of the initial, narrower patent simply so that the invention can be marked patented, while seeking broader patent protection through the continuation application.
What types of technology should the continuation practice be applied to?
Generally, cornerstone technology
“Cornerstone technology” is technology that is incorporated across all, or most, product lines, drives most revenue sales, and/or relates to the primary benefit that the company refers to when selling its services and products. Since the continuation practice may be cost prohibitive if implemented across all product lines, I generally recommend doing so only for cornerstone technology and its peripheral technology and only if the startup has excess discretionary funds.67
How does the continuation practice help prevent infringement against my invention?
Maintaining patent pendency of the parent patent application
Continuation practice helps deter future competitors from entering the marketplace with the patented invention. Continuation practice allows the subject matter of the patent application to maintain pendency after the original patent is issued. Consequently, competitors would have more difficulty designing around the patent portfolio and avoid patent infringement. By filing a continuation application, the applicant can craft claims specifically directed to what competitors are attempting to use to design around the patent claims to avoid patent infringement liability. This possibility discourages potential infringers from attempting to design around the existing patent(s) in the first place. Thus, they will be less likely to enter the marketplace to compete with the patent applicant.
How much does the continuation practice cost? Does it have any other benefits?
A few thousand dollars per year, per application
Each successive continuation application eventually enters the queue for examination and incurs a cost. There are therefore repeated costs associated with filing serial continuation patent applications as well as their examinations. On average, the cost to implement a continuation practice may be a few thousand dollars per year or more. In my opinion, it is worth the cost of engaging in this practice only for cornerstone technology.
One more benefit: Improved communication with the examiner
Patent prosecution occurs in a written format, which is not conducive to clear communication. Multiple office actions and responses may need to occur for the examiner to fully appreciate the invention. Continuation practice fosters increased, dialogical correspondence and therefore helps the applicant understand the examiner’s perspective of the invention and helps the examiner appreciate the full scope of patent protection that the inventor believes the invention deserves.
If I didn’t file for a continuation application before my patent matured, is there any way to reinstate the patent pendency status of the original patent application?
No. But don’t lose all hope!
If the patent applicant does not file a continuing application before the patent application matures into a patent, the pendency of the patent application will be terminated. However, the applicant may file a “broadening reissue patent application” (i.e., post-grant procedure) on the issued patent. The broadening reissue patent application must be filed within two years of the patent’s grant date. If it is not filed within that two-year period, the claims of the issued patent cannot be broadened. Unlike a continuation application, a broadening reissue application is limited in the extent to which it can be used to broaden the claims. The broadening reissue application cannot recapture that which was given up during the original examination process. For example, if during prosecution of the patent application the patent applicant had to include a limitation narrowing the claim’s scope to avoid the prior art, the applicant cannot remove the added limitation to broaden the claim via a broadening reissue application. Moreover, under the “original patent requirement,” the reissue claims cannot be broadened if the subject matter of the broadened claims were merely suggested or indicated in the patent specification. They must be based on the primary invention described in the patent application.
By contrast, the claims of a continuing application may be based on a hint, suggestion, or indication and provide broad leeway in claiming aspects described in the patent application, even if those aspects are not the primary aspect of the invention. For example, a patent specification may state, “it is also contemplated that the device includes other features such as, but not limited to, X.” This description may provide written description support for a claim directed to any of the X alternatives. However, the X alternatives may not be able to support the “original patent” requirement for the reissue claims if the X alternatives were repeatedly used as a feature referred to as the “invention” of the patent. The continuation patent application provides significantly more flexibility than a broadening reissue patent application for crafting the claims. Use the continuation practice for cornerstone type technology.
How can my own patent be used to reject another one of my own applications?
When it is considered prior art
An issued patent or “pre-grant publication” of a patent application can be used to reject a patent application filed later by the same entity if the patent or pre-grant publication were published more than one year before the patent application was filed. Issued patents and the pre-grant publications are prior art for patent applications filed more than one year after the publication date of the pre-grant publication or grant date of the patent. See Chapter 5 on the bars to patentability for more information.
Dealing with a double patenting rejection
It may be worth filing additional, independent patent applications or continuing applications (i.e., divisional, continuation, continuation in part, which claim priority back to the base parent application) for an auspicious invention or its improvements. However, when multiple patent applications are filed on a product with slightly different improvements, examiners may render a “double patenting rejection” if the claims in the patent applications are substantially similar.
Since multiple applications are being filed at different times and multiple patents with different termination dates may be issued, the patent owner may be able to extend the patent protection of the invention for more than the standard twenty-year term. A nonstatutory double patenting rejection would be made to prohibit the unlawful extension of patent term through the filing of multiple patent applications. However, the inventor can file a terminal disclaimer, which cuts short the patent term of any patent to make it “co-extensive” with another patent. This would avoid unlawfully extending the term of one patent in relation to other related patents. Since the doctrine of double patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of the patent, the terminal disclaimer resolves the nonstatutory double patenting rejection by cutting short the term of a later filed patent application and making it co-extensive with an earlier filed patent application.
If an examiner renders a nonstatutory double patenting rejection, the typical recommendation is to file a terminal disclaimer making the application’s patent term co-extensive with the conflicting pending patent application or the issued patent. However, in some cases, such as pharmaceutical sales in which drugs may produce significant profits on a daily basis, it may be valuable to argue that a nonstatutory double patenting rejection is improper because every day the patent is extended can generate a worthwhile profit.
If, however, the examiner determines that the claims of the patent application are identical to those of the pending patent application, the rejection is a statutory double patenting rejection and cannot be overcome by filing a terminal disclaimer. The claims in the current, pending application may be canceled since the claimed invention has already been previously examined and issued as a patent. Additionally, if an applicant receives a statutory double patenting rejection, he or she can alternatively broaden, narrow or shift focus of the claim so that it is not identical to those of other pending, patent applications or issued patents. The statutory double patenting rejection would be changed to a nonstatutory double patenting rejection. Filing a terminal disclaimer would overcome the rejection. In this way, the applicant can broaden the claims to make them different and salvage them rather than simply canceling them.
Can I claim features and aspects invented after filing the patent application?
If the new features and aspects that the inventor wants to protect were invented after the patent application was filed, they are, by definition, not included in the patent application. The claims of the patent application could not be amended and directed toward those features and aspects. If new claims are added, the examiner will render a “new matter rejection.” New matter cannot be incorporated into the claims or the patent application after its filing date. The inventor should include all features and aspects in the application when the application is filed if he or she wishes to claim them.
How to avoid a new matter rejection
The new matter rejection is based on 35 U.S.C. § 132,68 which states that no amendment shall introduce new matter into the disclosure of the invention, which often arises when claims are amended during prosecution. After the application is filed, the USPTO determines whether the substantive requirements are met and generally renders a rejection. To overcome the rejection, the claims are amended. When the claims are amended, the scope of the claims is broadened or narrowed, but the broadened or narrowed version must be supported by the patent application as filed or it will be considered new matter.
The new matter rejection is usually rendered when a limitation is added to the claims to narrow them and avoid the cited prior art. If this new limitation was not disclosed in the original patent application, the examiner will issue a new matter rejection. Arguments must be made that the new limitation is not new matter or the new limitation must be removed. Once the patent application is filed, its contents are fixed and new information (including such limitations) cannot be added to or removed. The contents of the patent application are fixed in time. The patent application should therefore include all information and peripheral aspects relevant to the point of novelty of the invention so that new limitations related to the peripheral aspects can be used to amend the claims to avoid the prior art.
67. See Appendix F
68. Although a trademark technically refers to products while a service mark refers to services, I use the term “trademark” to refer to both because the tests for protection and enforcement are basically the same. A tradename is different from a trademark or service mark. A trademark is a brand associated with the product or service that comes to the mind of the consumer and a tradename is merely a company name