According to a search of the U.S. Patent and Trademark Office’s (USPTO) database, the USPTO issued 391,101 patents to inventors last year. Of those, IBM leads the way with receiving over 9,100 patents in 2020. In fact, IBM has received more patents than anyone else for 28 years in a row now. With that track record, IBM indeed has built an extensive patent portfolio.
Building a Robust Patent Portfolio
Building a strong patent portfolio, such as IBM’s, not only comes through innovation and development but is the result of a carefully executed strategy. In particular, applicants, such as IBM, can expand their patent portfolios through strategically filing continuation applications.
What is a continuation application?
Typically, patent applications have detailed disclosures that describe multiple embodiments of an invention. As a result, the scope of a patent’s claims may only cover a small portion of what is actually disclosed in the application. In other cases, the claims may even be narrower than what the prior art may permit. Thus, a continuation application(s) are filed to cover other aspects of the invention and obtain border patent protection.
Overall, a continuation application has the same specification and drawings as the original application but a different claim scope. The relationship between the “original” application and one or more continuation applications is called the “patent family.” The original application is the “parent,” and the additional continuation applications become the “child(ren).”
How can continuations applications help me build a patent portfolio?
Continuation applications give an Applicant the ability to broaden or expand the parent application’s scope of protection. As long as there is at least one patent (parent or child) pending in the “family,” you can file a continuation application.
Broadening Scope of Protection
As noted above, continuation applications give an Applicant the ability to broaden or expand the parent application’s scope of protection. In particular, Applicants can strategically remove claim limitations from the parent application to increase the scope of the claims.
For example, let’s say that you receive a Notice of Allowance for Patent A covering A,B,C, and D. After reviewing the application, you realize that you don’t actually need C. In this case, you can broaden the scope of your patent protection by filing a continuation application with the limitations A,B, and D. If the continuation application issues as an allowed patent, you now have received a broader scope of patent protection over the parent because you no longer need element C to infringe.
Pursuing Additional Aspects or Embodiments
In other cases, continuation applications allow Applicants the ability to pursue additional embodiments not covered in previous applications.
For example, let’s say that you receive a Notice of Allowance for Patent A covering A, B, C, and D. After reviewing the application, you notice that there is another embodiment of your invention that you would like to protect. In this case, you can file a continuation application on the second embodiment covering elements E, F, and G. Thus, Applicants can expand the scope of their protection.
Preventing Design Arounds
In yet another example, continuation applications can help capture potential design arounds of your invention by competitors. Specifically, by filing a continuation application with “deferred examination,” you can keep the patent family alive, while monitoring potential infringers in the marketplace. If a design around is discovered, the Applicant may have the ability to draft a specifically tailored claim to capture the particular design around—thereby removing it from the market.
For example, let’s say that you receive a Notice of Allowance for Patent A covering A, B, C, and D. After reviewing the application, you file a continuation application with deferred examination to broaden the scope of your protection. Deferred examination allows you to request that your application be deferred from being examined for up to 3 years. This essentially gives the Applicant a three-year window to monitor the marketplace for potential design arounds. If a competitor designs around your current patent within those 3 years, you can attempt to capture their design around in a continuation application. As long as you have support for the design around and can overcome the prior art, you can effectively “write” a patent to specifically cover the competitor’s device. As you can imagine, this can be incredibly valuable.
Applicants may have a particular improvement on the invention that was not disclosed in the original parent applicant. In this case, the Applicant can file a continuation-in-part application (CIP) application. The CIP application includes additional information not disclosed in the parent application. Specifically, any claims based on disclosure from the patent application receive the parent application’s priority date. While, the priority date of the claims based on the new disclosure is the filing date of the CIP application.
Overall, when used strategically, continuation applications can be a valuable tool to building a robust patent portfolio. Continuation applications are typically cheaper to file and quicker to receive an allowance than the original parent application. No matter who you are, once you receive a Notice of Allowance, you should always consider whether it makes sense to file a continuation application. Continuation practice is just not for companies like IBM; anyone can benefit.
USPTO Search Query: ISD/1/1/2019->12/31/2019