Posts Tagged: "continuation"

Are fewer continuations the sign of a healthy patent system?

Hirshfeld explained to me that he is well aware of all of the portfolio reasons why continuations are very important, but the Office does really want to minimize RCEs, which makes all the sense in the world. An RCE is not a new application, is essentially just payment for additional consideration by an examiner. RCEs, while sometimes necessary can and do become inefficient and attempts to streamline the prosecution process have long tried to make them unnecessary in whole or in part to the extent possible.

Strengthening Patent Value Throughout the Patent Prosecution Flow

Patents allow you to protect your inventions, license the use of the inventions of others, and introduce additional revenue streams to your business. Patents also require investments of time and money to maximize their usefulness. By focusing your investment and efforts on optimizing the usability of patents of value, you can improve the validation that your applications read on markets of interest, and that further your portfolio goals, help tune a patent portfolio by developing indication of use (IoU) of some applications regarding products of interest, and early cost savings by avoiding applications with challenges or concerns, use applications as soon as they are granted and improve utilization of filed inventions by identifying continuation opportunities… There are many ways that patent strengthening can improve a portfolio. By focusing on optimizing the quality of patents of value you can achieve maximum ROI from their use, and you can minimize the cost by avoiding lower-value applications as well as their future maintenance.

Open Prosecution as a Strategy to Counter IPRs Filed by Defendants

One of the most valuable benefits of Open Prosecution is when a patentee is forced to enforce a patent. If the patentee filed for a Continuation, it could file for an additional patent with new Claims but the same Priority Date as the original patent, and add it to the lawsuit. And, of course, before that second patent is issued, the patentee files for yet another Continuation. The plaintiff in a patent infringement lawsuit can use an Open Prosecution model to continue to introduce new patents as a counter-strategy to the IPRs filed by the defendant. More than a few patent infringement lawsuits ended in favorable settlements once the defendant realized it had a formidable opponents with additional patents up its prosecution sleeve.

Immersion Corp v. HTC Corp: CAFC affirms filing continuation on day parent issues

In large part, the CAFC was concerned with the possible disruption of overturning long-standing PTO practice and the reliance placed on it by practitioners, and this respect and concern for practice is to the court’s credit. And to its credit, the CAFC said as much: the “Supreme Court has long recognized that a ‘longstanding administrative construction,’ at least one on which reliance has been placed, ‘provides a powerful reason for interpreting a statute to support the construc­tion…[h]ere, HTC’s position would disturb over 50 years of public and agency reliance on the permissibility of same-day continuations. We see no basis for denying the existence of a facially large disruptive effect were we now to repudiate the same-day-continuation policy.”

Patent Strategy: Building a patent portfolio with meaningful rights

Last week I wrote about adopting a patent strategy in order to lay the foundation for success. What the article did not touch upon, however, is how you can use procedural mechanisms available at the Patent Office to expand your patent into a patent portfolio, or how to correct unforeseen problems with your patent (or portfolio) that may needlessly compromise…