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.