- Continuation Advantages
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. When a patent is granted the patent attorney may seek to amend it by a number of methods:
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."
- 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.
Continuation applications have the same specification but frequently have different claim scope. This may be to broaden or modify what the continuation patent covers. Because the "child" continuation claims priority to the "parent" application that is about to issue their patent terms are "coterminous." Accordingly, continuations do not "extend" the patent term. However, by keeping at least one "child" application alive, a company may update, modify, and even include additional subject matter in a later filed "continuation in part" (CIP) application. None of this can be done by a reexamination or reissue application.
An additional strategy is to file a petition for 36 months deferred examination. This puts the continuation on the "slow train." If or when the continuation needs modification it can be "reactivated."
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