What is a Patent Family Tree and How Do I Make One?
I previously discussed the importance of continuations and continuity in What Makes a Good Contingent Fee Patent Case?. I further explained the concept of continuations and continuity in What do Contingent Fee Patent Lawyers Look for When Considering Continuity? After filing multiple continuations, it can become a challenge to keep the information organized.
How do we keep track of the family of continuation applications, their relationship to one another, and the continuity chain to make sure everything is proper? We use a "patent family tree.”
A patent family tree is a vertical timeline showing the prosecution of each application in a portfolio and their relation to one another. Each vertical timeline is linked to its parent and child continuation applications horizontally. If there is an issue, there will be a visual break in the link that is easy to visualize. Simple!
An excellent way to start creating a patent family tree is to sketch a rough draft on paper while referring to the prosecution history of each patent in the portfolio. The "continuity" tab in the USPTO's PAIR website is a great resource for this information. Beginning with the first provisional or non-provisional application:
Make a timeline down the left side of the page.
Place boxes representing the first filed application adjacent to the proper date.
Fill in the box with useful information such as an application number, title, examiner name, filing date, etc.
Draw a line extending downward along the timeline and note events such as office actions, issue notifications, etc.
When the application issues or goes abandoned, add another box with information such as the issue date and patent number.
For each continuation, draw a line to the left or right at the appropriate place on the vertical timeline. Note if it’s a Continuation, Divisional, or Continuation-in-Part.
Then repeat steps 2(1)-(3) for this continuation application.
You will know if there is an issue with continuity because the line to the left or right described in step 3, above, will not be connected to any prior application. It is highly advantageous to create the patent family tree as you are prosecuting your patent applications to ensure you find and address any continuity issues before they become uncorrectable.
Once you create a rough version of a patent family tree on paper, it is simple to convert it into a digital representation in a computer program such as Excel. Provided below is an image illustrating the format of a more complex patent family tree with numerous continuations. In the example, a provisional application was filed in 2007 (color coded orange), and many other applications were filed claiming the benefit of prior applications (color-coded green). Many issued patents resulted (color coded blue).
Patent families can become complex. It is helpful to have a simple tool like a patent family tree to avoid making a mistake that can have a significant negative impact on the overall value of a patent portfolio.