It would be nice if simply obtaining a patent ended the conversation.  However, any good patent attorney knows that once a first, or second or third patent application is allowed by an examiner, you have to ask yourself whether the resulting coverage properly protects the invention.  For example, if the resulting coverage, or, the scope of the allowed claims, is too narrow such that competitors could design around it without extreme difficulty, further protection might be in order.  There are several vehicles that can utilized to obtain more coverage.

First, before a patent issues, applicants have the opportunity to file what is called a continuation patent application.  This patent application will be very similar to the parent application from which it is based, but it will have a different set of claims, typically directed to the same invention as the parent application, but with claims having a broader or different scope.  This patent application will be linked to the earlier parent patent application, and as such will have the same filing and priority date as that parent application.  Other then being linked to the parent application, the continuation patent application is treated as any ordinary patent application, e.g., it will be examined by a patent examiner in exactly the same manner as the parent application and have the exact same effect as any other issued utility patent once it issues.  However, if it issues, it will have different claims than the parent application, and therefore offer the applicant different, hopefully broader, coverage.  Moreover, because the subject matter of the claims of the continuation patent application is strongly related to the subject matter of the parent patent application, prosecution typically takes less time than the parent application.  The USPTO generally assigns continuation patent applications to the exact same patent examiner who examined the parent patent application.  Because this patent examiner already examined and allowed the parent patent application, he or she is very familiar with the applicant’s technology and the relevant prior art, therefore allowing him or her to evaluate the newly presented claims without as much difficulty as was done in the parent patent application.  Finally, it is worth noting that though continuation patent applications allow for different and/or broader subject matter to result, that subject matter in the claims must be supported by, or disclosed sufficiently in, the disclosure of the parent application.  Failure to do this will likely result in a rejection of the claims by the patent examiner.

Second, before a patent issues, applicants have the opportunity to file what is called a divisional patent application.  US Patent Law, and I believe Patent Law everywhere around the world, stipulates that a patent can only issue on one single invention.  If an applicant presents claims that include in them more than one single invention, the assigned patent examiner will, before examining the substance of the claims, issue what is called a restriction requirement.  Trying to argue that a restriction requirement is not proper is an almost impossible task with the USPTO.  As such, applicants are forced in this situation to elect one of the inventions, e.g., one grouping of claims, to prosecute.  Although it is possible later on in prosecution to have the non-elected claims rejoined, this can be difficult.  Accordingly, once the patent application on the elected claims is allowed, but before it issues, the applicant has the opportunity to file a second patent application, called a divisional patent application, in which the non-elected claims from the parent application are presented.  This divisional application is treated as a typical patent application and will be enforceable in exactly the same manner as one if and when it issues.  Like the continuation patent application, discussed above, the divisional patent application will be linked to the parent patent application and therefore have the same filing and priority date as the parent patent application.  Again, claims presented in divisional patent applications must still derive support, or be disclosed sufficiently in, the parent patent applications.  If they do not, the patent examiner will reject them.   

Finally, before a patent issues, applicants have the opportunity to file what is a called a continuation-in-part (CIP) patent application.  With this filing, unlike the continuation and divisional patent applications, discussed above, the applicant will be filing on newly presented subject matter.  Though this vehicle comes with an important drawback, it is useful in situations where the inventor has further developed his or her technology since the time that the original parent patent application was filed.  Because those developments were not presented initially, a patent examiner would reject them, and be right in doing so, in the original, continuation, or divisional patent applications.  This is because any claims for those developments would not derive support in the original disclosure, a requirement of US Patent Law.  However, with the CIP patent application, the applicant can add to the disclosure information about the new developments in the technology.  This information will provide support to the claims in the CIP patent application, satisfying legal requirements that otherwise would have barred the claims.  Again, the CIP patent application, like the continuation and divisional patent applications, will be examined and be able to be enforced in exactly the same manner as the parent (e.g., the original) patent application.  However, and this is the main drawback to CIP patent applications, once a CIP patent has issued and is enforceable, it typically is not entitled to the priority date of the original parent patent application.  This is because the claims of the issued CIP patent application are based on information that was not present at the time of filing of the parent patent application.  As such, generally the claims of a CIP patent application are entitled to the priority date of the filing date of the CIP patent application.  

In sum, though getting a patent is a great thing for an inventor, it is imperative that the inventor ask himself or herself, upon receipt of the initial Notice of Allowance from the USPTO, how good is my coverage?  If the coverage is great, e.g., the independent claims are very broad, and the dependent claims are expertly layered to provide breadth and also particularly define the invention, the applicant likely should feel confident that paying the issue fee without further action is a good idea.  However, if the applicant had to amend the claims, a little or a lot, during prosecution, or if the first Office Action was a Notice of Allowance and the applicant believes he or she left something on the table, or if there was a restriction requirement during prosecution, or if there were new developments in the invention since the initial filing, then a continuation, divisional, or CIP patent application may be in order to secure at least a second patent for the inventor.  Although these vehicles increase costs, building weapons to protect an invention, which is what a patent does, costs money.  If the invention has the capacity to increase a client’s bottom line by a million dollars, then one or two patents may be in order.  However, if the inventor has invented the holy grail of inventions for this age, then he or she may need an armada of patents for protection.  These three vehicles can add to the fleet.

This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.

©John P. Powers, 2020, all rights reserved.