On Topic VPLM.. So What Is The Benefit?
Continuation practice is all about strategy, a strategy that should be developed in close cooperation between the applicant and their patent attorney. In developing a strategy for a family of related inventions, one must consider the advantages and disadvantages of obtaining an earlier effective filing date. Ask yourself, what am I gaining by filing a continuing application rather than an original application?
In answering this question, it is necessary to keep in mind that a patent term is 20 years from the filing date of the earliest filed parent application. Therefore, filing a continuing application, rather than an original application, has the potential to reduce the life of a subsequently issued patent. However, a continuing application may need the effective filing date of the parent application to overcome recent prior art or other statutory bars.
Another consideration is the potential risk of others designing around your patent. If this is a substantial risk, it may be worth using continuation applications to ensure the disclosure of the original application is always pending. The benefit is that if a competing product has designed around the original patent, the claims of the pending continuation application may be modified so as to ensure infringement if a patent should issue. Of course, the modified claims must be supported by the disclosure.
A further consideration is that of commercialization. Patent applications are typically written as broadly as possible and for this reason are met with resistance in the Patent Office. The Patent Office will often allow the narrow claims of an application while rejecting the broader claims. When an applicant has a particular product with immediate commercial potential, it may be wise to delete the broad claims during prosecution to obtain a patent on the narrow claims covering the specific product. The broader claims can be filed in a separate continuation application, with the commercial product being protected in the meantime.
Each of the applications described herein has unique procedural requirements and deadlines that are beyond the scope of the present article and should be discussed with a patent attorney.
