What do Contingent Fee Patent Lawyers Look for When Considering Continuity?
As discussed previously in What Makes a Good Contingent Fee Patent Case?, one of the most critical factors for a contingent fee patent representation is whether there is a pending continuation application on file with proper continuity.
What is a "continuation application" and proper "continuity"? Here is an example to help explain the concept of continuation applications and continuity:
When you file your first patent application, you submit to the USPTO a detailed description and figures describing everything about one or more inventions. For example, you submit a disclosure for a new cup that may have a novel lid for a straw or a novel lid that does not require a straw. When that information is submitted, you get a filing date from the USPTO. This patent application is the is the "parent" patent application.
You draft claims for the "parent" patent application directed to a small component of the submitted information (e.g., the novel cup with a lid for a straw).
In the future, you notice that many companies are focusing on eliminating straws from their product lines, and you want to submit additional claims directed to the strawless invention (e.g., the new cup with a lid that does not require a straw). You want to keep the same filing date (to avoid a rejection based on art after your first filing but before your next filing). You file a verbatim copy of the application disclosure presented in the "parent" application, but you change the claims to direct them to the strawless lid invention. This application is known as a "continuation application," and it is a "child" of the "parent" application.
You can file the "continuation application" only if the parent application is still pending (i.e., before the "parent" issues or goes abandoned). You must file a "continuation" application on the day of issuance or abandonment of its "parent" application, but preferably sooner. See Immersion Corp. v. HTC Corp., 826 F.3d 1357 (2016).
Having at least one application pending at all times before the abandonment or issuance of a prior patent is "continuity." In other words, continuity is the continuous pendency of at least one application. If all applications in a portfolio have already issued or gone abandoned, and there is no pending continuation, then there is no longer continuity. In this situation, the option to file a continuation no longer exists, and you cannot continue to file claims that obtain the benefit of your earliest filing date.
Again, this is important and an area where a lot of patent owners have made what I consider to be a big mistake; it ends their ability to defend and assert their inventions actively. In the above example, if the "parent" application had issued or gone abandoned before a decision was made to file claims to the strawless lid, then game over. There would be no practical way to continue to pursue legal rights suitable for contingent fee patent licensing or enforcement.
Furthermore, in the above example if the strawless lid patent is allowed, then file a continuation before it issues! If a continuation exists, it can be used by patent counsel to fix issues that may arise during licensing and enforcement efforts, adapt claims based on changes in the law, or direct requests toward additional unclaimed aspects of the original disclosure that later become infringed.
With the above general explanation and examples of what a "continuation" is and what they enable, I will discuss the different types of "continuation" patent applications described in the USPTO's Manual of Patent Examining Procedure (MPEP).
First, any application that a continuation is filed from is called a Parent Application. See MPEP 201.04. From a parent application, the following types of "continuing applications" may be submitted:
Continuation Application (MPEP 201.07) - A continuation is a second [or third, fourth, fifth…] application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented.
Divisional Application (MPEP 201.06) - A divisional application is a "regular" continuation filed in response to a restriction requirement (i.e., a notification from the USPTO that you have patentably distinct claims to separate inventions requiring separate searches). See MPEP 803. For example, for the cup example above, if you had filed claims to both types of lids in the parent application, the examiner may have issued a restriction requirement requiring the election of one of the two sets of claims. The restricted claims (those that are not elected) may be filed in a "continuation" as described above; however, because this is in response to a restriction requirement, it is now called a "divisional" application.
Receiving a restriction requirement may be a short-term burden to an inventor due to increased application filing fees, they are favorable. The USPTO is acknowledging that there is more than one invention. The restriction can be helpful later on to shield the divisional application from invalidation should one of the other continuation applications be challenged and invalidated.
Continuation-in-Part Application (MPEP 201.08) - This is a "continuation" filed with the additional disclosure not provided in the "parent" application. For example, you develop an additional feature added to the original invention (e.g., a special base used with the cup in the above example). Append this new disclosure to the original disclosure, and the application becomes a "continuation-in-part." You should note this will affect the earliest filing date to which the claims in the continuation-in-part are entitled. The later priority date will result in additional art becoming available to use in a rejection. If you are contemplating filing a continuation-in-part, consider submitting a continuation without the new matter off of the parent application in addition to the continuation-in-part. This way, you can maintain continuity back to the original priority date without creating arguments that every subsequent continuation application should have the later filing date.
As noted above, it is critical to file each continuing application before the issuance or abandonment of the parent application.
The MPEP also discusses Reissue Applications (MPEP 201.05). These are used to correct specific errors made during prosecution. However, a reissue application may also introduce intervening rights (see MPEP 1460), so the reliance on a reissue application will create an argument for intervening rights that could reduce or eliminate any infringement liability or damages at trial and make it hard for a lawyer to consider taking the case on a contingent fee. To the extent an application is still pending, a continuation may be a better option for fixing errors and avoiding the introduction intervening rights.
In a typical contingent fee representation, the first patent in the family will be a parent application to the first continuation. The first continuation is the parent to the second continuation and so forth. The presence of divisional applications is generally a positive factor. Continuations-in-part can be beneficial if they do not impact the earliest priority date of the pending claims. Reissue applications must be considered carefully to ensure they do not present intervening rights issues which could reduce or eliminate the damages case.
In my next post, I will discuss one tool that is used to evaluate proper continuity and visualize the patent family.
