All tagged Continuations

Mining the Patent Specification for Infringement Using Continuations

As patent portfolios age, the core concept of the original claims can be used as a framework for later claims to track what competitors are doing. Using continuations, the core concept of the claims can be modified by broadening (removing aspects from the claims) and narrowing the claims (using the additional disclosure that was not initially the focus of claims in earlier patents).  By doing this, numerous patents and claims of different scope can be drafted over time that are tailored to exactly what your competitors are doing. This can turn a single patent into a formidable patent portfolio that can be difficult and very expensive for your competitors to prevail against.

Finding Forward Citations and Getting Claims Your Competitors Want Using Continuations

With a pending continuation, a patent owner is able to monitor and act on forward citations that surface over time. Forward citations are instances where later filed patent applications cite back to your patent specification.  This is similar to a journal article citing to prior journal articles that  are relevant or otherwise used for background information.  If your patent is a forward citation and is cited as a 102 reference it means that a patent examiner has specifically determined that your patent is a "blocking patent" to the claims sought by the later applicant.  This is powerful and actionable information.

Before Your Patent Issues, File a Continuation!

Given that the first application only covers what is specifically called out in the Claims, it is my strong opinion that a continuation should be filed before the issuance of the patent to protect additional material not encompassed by the first set of Claims.  A continuation is essentially a copy of the non-provisional application, that claims the benefit of the provisional and prior non-provisional applications.  The continuation also contains new patent Claims.  The continuation allows an inventor to continue to claim other inventions in the disclosure with the filing date of the original provisional application.

Proactive Patent Prosecution

When an inventor starts down the path of obtaining patent protection, it is important to understand that the process does not end with an issued patent. Unless superficial protection is desired (e.g., a piece of paper to hang on the wall), patenting an invention is an ongoing process. Inventors should keep at least one application in the patent portfolio pending at all times. When the portfolio is pending, it can adapt as an offensive and defensive tool as the market for the technology evolves.  I call this ongoing process “proactive patent prosecution.”