Well-informed, experienced patent attorneys strive to respond to office actions as quickly as possible. Office actions on a patent application are issued from patent examiners at the USPTO. Getting a patent is a balancing act between two objectives:

  1. having a patent that is narrow enough to be valid over the prior art; and
  2. having a patent that is broad enough to capture infringing products and activities.

In most cases, the patent examiner concedes the invention is new and useful but wants to make sure the patent claims are balanced. After all, the patent grant is a powerful legal right….a 20-year monopoly and restraint of trade.

It is human nature to forget

Short and long term memory are distinct features of the human brain and patent examiners still have hundreds of thousands of backlogged cases. For any individual patent examiner, your application may be one of hundreds he or she is assigned to. Quickly responding to office actions improves the chance the case will keep moving along.

If we wait until the 3-month statutory deadline to respond (or longer with
extensions) we lose the opportunity to return the case to the examiner while the application is still fresh in their mind. If an examiner picks up our response many months later it is like starting over from the beginning.

Don’t Lose Patent Term

Prior to June 8, 1995 patents enjoyed a 17-year term from the date of issue. Therefore, we were not in such a hurry to respond to office actions. However, patent terms are currently 20-years from the date of filing. Therefore, the length of usable patent term is diminished by delay. Consequently, if you do not respond quickly to patent office actions you are giving up potentially valuable patent term.

Contact us Now and Keep the Momentum

Do not delay…work with your patent counsel to promptly respond to your pending office action.

Related U.S. Application Data block in a published continuation applicationRelated U.S. Application Data block in a published continuation application

The United States Patent and Trademark Office (USPTO) has allowed your patent application and it is about to become an issued United States patent. Congratulations on your accomplishment! You are about to become a United States patent holder–a distinction reserved only for true visionaries and innovators. Prior to the issuance of your patent, you have an opportunity to continue building your patent portfolio and expanding your patent rights by filing a continuation patent application. Interested in finding out more about the advantages of filing a continuation patent application? Read on.

A patent is a barrier to competition. Well-informed patent attorneys seek to anticipate how competitors will attempt to design around the patent claims. While broad claims are sought, they must also be drawn with precision to avoid invalidity in view of prior art. Sometimes, neither inventor nor patent attorney can anticipate how a technology may evolve. After a patent is granted, a patent holder has very limited avenues for changing the scope of patent coverage. The two most commonly-used methods for accomplishing this objective are as follows:

  • Reexamination: Either the patent owner or a third party challenger may cite new (or unapplied) prior art arguments against an issued patent. This procedure is frequently initiated in response to litigation seeking to cancel patent claims.
  •  Reissue: A patent reissue is often filed when prior art was inadvertently withheld during patent prosecution or the patent claimed too much (or too little). A patent’s scope can only be broadened within 24 months after it issues. After that, reissue amendments can only maintain or narrow the scope of coverage.

Both reexamination and reissue proceedings can be expensive and create new liabilities in the protection of an invention. However, there is another cost-effective method: filing a continuation application prior to the issuance of the “parent” application.

Advantages of a continuation patent application

A continuation patent application must have the same specification and drawings as the parent application. However, the continuation application can have a different claim scope. Therefore, a continuation application provides an opportunity to broaden or modify patent coverage for your invention. Because the continuation (the “child” application”) claims priority to a co-pending “parent” application, their patent terms are “coterminous.” Accordingly, continuation applications do not “extend” the patent term. However, by keeping at least one “child” application alive, the patent holder may update, modify, and even include additional subject matter in a later filed “continuation in part” (CIP) application.

In some cases, your patent attorney may recommend filing your continuation application with a request for deferred examination. You can find more details about deferred examination here.

Category: Patent

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Anton Hopen

U.S. Patent Attorney with smithhopen.com.