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Preparing for Future Litigation Before Your Patent Issues


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: October 26, 2010 @ 7:30 am
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Over the last couple weeks I have heard from several people who believe that there is activity that would be considered infringing but for the fact that the patent application has not yet issued.  The question asks: is there anything that can be done?  The answer is a resounding YES!  I know this for fact because I am an inventor on an invention where there is activity that would be infringing, and as soon as my patent is issued I plan on bringing an infringement action, perhaps on the day that the patent issues.  So there are tried and true things you can do while your application is pending, which can help you later.  I have employed these strategies, and continue to move forward to employ them in my situation.  Perhaps I will soon have an opportunity to employ them for others as well.

First, in order to understand the strategy you need to know some basic information about ways to continue to keep alive an invention in a patent application at the United States Patent Office.  A continuation is a second application for the same invention that was claimed in a prior nonprovisional patent application and filed before the prior nonprovisional patent application becomes abandoned or the patent issues. At any time before the patenting, abandonment or termination of proceedings on the earlier nonprovisional application an applicant may file a continuation in order to introduce into the application a new set of claims.

A continuation differs from a Request for Continued Examination (RCE) because a continuation is a new application and receives a separate serial number. An RCE can, in many instances, be an excellent option. An RCE is essentially where the applicant pays a fee for additional consideration by the patent examiner. There is no new file opened, the same serial number is used and the case goes back into prosecution at the top of the examiner’s pile of work. A continuation does not go back to the front of the examiner’s line, but rather as a new application it goes to the back of the line. This does not make a continuation a bad option in many instances. The primary detriment of the RCE is that both allowed claims and rejected claims go back into prosecution, so the patent examiner could, if he or she chooses, decide to reject previously allowed claims.  So the risk is not always warranted.

The disclosure presented in the continuation must be the same as that of the original application, which means that the continuation cannot include anything not included in the prior nonprovisional patent application. A disclosure discussing aspects of the invention not contained within the prior nonprovisional patent application would constitute what is called “new matter” and is not allowed.

If you are trying to add disclosure that would otherwise constitute new matter you would file what is called a continuation-in-part (CIP). Filing a CIP could be an option in some circumstances, but if you want to add disclosure ideally you won’t have to file a CIP because you would rather keep the original filing date of the underlying, prior nonprovisional patent application if at all possible. In fact, pursuing some of the strategy described in this article simply wouldn’t work if you had to file a CIP. This is because we are eventually going to discuss filing a patent application that specifically covers what your competition or the prospective licensee is doing.  But if you have to file a CIP, whatever you disclose as new matter in the CIP will be given a new priority date, which means that more would be considered prior art, including what the competition is doing currently. Thus, if you write a claim or claims that specifically cover what a competitor or prospective licensee is doing, if you had to file a CIP to support those claims what the competitor/licensee is doing would almost certainly be prior art that would prevent you from getting a patent on those claims.

This may be confusing to some, but for now suffice it to say that it is exceptionally important — indeed overwhelmingly important — that your initial, foundational patent application is as complete as possible.  That means it should be detailed, discuss as many versions of the invention as possible, be both broad and ever increasingly specific.  If you are serious about your invention filing a bargain basement patent application is simply a waste of time and money.  Bargain basement patent applications simply cannot disclose much more than what is claimed, making them of marginal value at best.

So stay away from CIPs whenever possible, unless of course there is a newly invented version or embodiment of the invention that wasn’t available at the original time of filing.  But assuming there is no newly invented aspects, you want to file a continuation, which is an excellent option when the underlying, previous nonprovisional patent application has some claims that are allowed. If you are at all familiar with the famous Kenny Rogers song, The Gambler, you know why. The song goes:

You got to know when to hold ‘em, know when to fold ‘em,
Know when to walk away and know when to run.
You never count your money when you’re sittin’ at the table.
There’ll be time enough for countin’ when the dealin’s done.

Whenever the patent examiner is willing to allow claims serious consideration should be given to taking what is allowed. To do this you would cancel any rejected or withdrawn claims, thereby leaving only claims that are allowed, which will result in a Notice of Allowance and an issued patent in due course. Prior to this patent issuing you would file a continuation, seeking to continue to broaden your protection by seeking broader claims, including many of the claims you just canceled and which were previously rejected.

Following this strategy will get you a patent with at least some claims, and investors love patents. Sophisticated investors know that if you have one patent you can get more from the disclosure by filing continuations and continuing to milk the disclosure for as many claims as you can eventually get the Patent Office to issue. Of course, you also now have a patent, which can be enforced.

Hopefully you will have claims allowed that will enable you to pursue those competitors who are encroaching on your space, or seek licensing deals in the event that you are a non-practicing entity, such as an independent inventor or would-be patent troll. Of course, many times once you see what the competition or prospective licensee targets are doing you will have wished that your patent claims had some different language. Never fear! As long as your original disclosure is broad enough you can go back for more, as if you are at an all you can eat buffet.

This strategy is tried and true, and any company with a serious patent portfolio and an eye toward enforcing that portfolio through licensing or litigation has followed this strategy. What you do is look at what your competitors are doing, or what that big target prospective licensee is doing, and you write a claim that exactly covers what they are doing. Then you add that specific claim to your continuation. As long as your original disclosure supports that claim you are entitled to add the claim. So if you are a serious inventor, a would-be patent troll or a business of any size with designs on licensing or litigating, you absolutely cannot cut corners at the time of filing the first, foundational patent application. You want the kitchen sink in that first patent application because if the path proves commercially viable you will want to milk the disclosure for many patents, and you will want to be able to argue convincingly that whatever claims you add later are actually covered by your initial patent application.

The final piece of this puzzle is this — if a patent claim that issues in a patent is substantially the same as a patent claim published you have at least some patent rights from the point of publication forward.  Now this can seem misleading, so particular care needs to be given, along with caution.  You cannot bring a lawsuit seeking to enforce published patent claims. You cannot bring a patent infringement lawsuit until the patent issues.  But if the infringer was aware of your published patent application and the claims published are nearly identical to those that issue you are entitled to a reasonable royalty between the date of publication and the issuance of the patent.  Given the length of time it takes to get a patent issued in some technical arts that could be particularly important.

I might not need to say it, but allow me to point out the obvious.  No one should rely on the general advice in an article.  You should always have a competent patent attorney review your situation and advise you based on your unique facts.  Discussing a strategy in a nebulous manner might seem confusing, so if you think you have a particularly valuable patent application pending prior to issuance, and there are those out there that would be infringing, it makes sense to seek a consultation to talk with a patent attorney about what can be done.  If I can assist with patent prosecution strategy please feel free to contact me.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Litigation, Patents

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

9 comments
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  1. “What you do is look at what your competitors are doing, or what that big target prospective licensee is doing, and you write a claim that exactly covers what they are doing. Then you add that specific claim to your continuation.”

    How can you add this material when you didn’t invent it, your competitor did? You didn’t possess it until you saw what your competitor was doing. Thanks in advance for the clarification!

  2. KP-

    You are making one mistake, which is assuming that your specification cannot make the claim. If the specification is written appropriately, and not as part of a bargain basement patent application, the specification will be extremely broad and far reaching, detailing far more than what is claimed. So the question is this: can your specification support what it is that your competitor is doing. If the answer is yes, or at least plausibly yes, then you add a claim that covers exactly what your competitor is doing. If successful then you will be entitled to the claim and your competitor would be infringing once your patent issues.

    So the mistake you make is that you presume that what you invented is limited to the claims you originally submitted. If your application is a good one that is not the case. Unfortunately, many inventors are lured in by extremely low prices and deep discounts. Those prices that are unbelievable that you find on the Internet are unbelievable for a reason. What you get will almost certainly be very little in the way of specification support and extremely narrow claims. This strategy simply won’t work when that is done.

  3. Can you point me to an application/patent with a well written spec that is “extremely broad and far reaching, detailing far more than what is claimed”? I try to cover this by mentioning other configurations that could be used, but I’d like to see if I’m missing anything. Well, I’m most likely missing something, so I’d like to learn :)

    Also, you recommend taking the allowed claims and doing a continuation for the rejected claims. How about this scenario. In a first office action, an independent claim is rejected but several dependent claims would be allowed if rewritten to encompass the limitations of the independent (and any intervening) claim. I reserve my right to rewrite the dependents as suggested, but make an argument for the independent claim. The examiner makes a final rejection. I then file an amendment canceling all rejected claims and rewriting the “allowed” dependent claims. Has anybody seen this being allowed by an examiner?

    This might be useful where the inventor doesn’t want to spend any more money on a continuation.

    Just curious.

  4. “Has anybody seen this being allowed by an examiner?”

    Sure, I’ve gotten allowances that way before. Why would the examiner ever not allow the case in that situation?

  5. IANAE – “Why would the examiner ever not allow the case in that situation?”

    I’ll preface my answer by saying that I STRONGLY disagree with Examiners doing this, but it does happen.

    In a situation where an Examiner will indicate a dependent claim allowable in a final rejection (where there are other dependent claims that are rejected), and after final the applicant amends to rewrite said dependent claim in independent form, I know of a couple SPE’s that will advise the Junior Examiner to send an advisory action, indicating that the amendment requires further consideration/search because the other (previously rejected) dependent claims now have a different claim scope (due to the incorporation of limitations of the dependent claim into the independent claim) and at least further consideration (i.e. 112 issues) is required in response to that amendment.

    Again, I think this action by an Examiner and/or SPE is totally bogus and I don’t do it myself and don’t advise junior examiners that report to me to do it, but it does happen.

  6. “Why would the examiner ever not allow the case in that situation?”

    I hadn’t heard of anybody doing it, although I have heard of the “take the allowed claims and file a continuation” method. So I was just curious if there were some reasons why it might not work.

    The pros of the method I described are that you get an extra shot at arguing your case before filing a continuation with modified claims, and you have some chance of getting the unmodified independent claim allowed without paying extra.

    The con is that any allowed claims may issue several months later than if you take the allowed claims.

    Any other pros or cons?

  7. “Those prices that are unbelievable that you find on the Internet are unbelievable for a reason. What you get will almost certainly be very little in the way of specification support and extremely narrow claims. This strategy simply won’t work when that is done.”

    Gene’s absolutely correct.

    Inventors who hire such firms don’t know what they don’t know … and by the time they do know (if ever) it’s far, far too late to do anything about it.

    But hey; if all you wanted was a patent to hang on your wall and brag about, well; you got your wish.

  8. Thank you for the caveat urging innovators to consult a qualified patent attorney when initially drafting claims. While some inventors opt to “go it alone” — usually because of cost — I would hesitate to encourage innovators to prepare even provisional applications without at least some input from an attorney or other qualified patent professional. What may seem to be a minor error on a provisional or nonprovisional application can in fact invalidate applicable claims — the worst-case scenario being that the inventor is left without any patent protection. Worse yet, s/he might not even know it, until after becoming involved in costly and potentially crushing patent litigation.
    http://www.generalpatent.com/media/videos/patent-suits

  9. Same here I’ve gotten allowances that way before. i think 4 years ago. Why would the examiner are not allow the case in that situation?