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Jeffrey Snow Talks about Advantages of Continuation Patent Programs with Law360

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Jeffrey Snow Talks about Advantages of Continuation Patent Programs with Law360

Partner Jeffrey Snow, part of Pryor Cashman’s Ip, Lawsuit, and Digital Media Groups, spoke to Law360 because of its March 18, 2016 article, “4 Occasions to file for a Continuation Patent Application.”

Law360 reviews that whenever inventors are searching to safeguard an innovation, a typical patent application might not be enough. Continuation programs assistance to fortify their claims and stop competitors from creating around their invention.

Additionally, if your patent owner is presently getting an violation suit or its patents are now being challenged inside a publish-grant proceeding in the patent office, it may be useful to possess a pending continuation application to ensure that related claims could be modified according to what arises in individuals contentious proceedings.

Snow told Law360: “It’s helpful to possess a continuation application to have the ability to develop claims of various scope and also to either capture exactly what the accused method is or avoid prior art references which are discovered throughout lawsuit. If related claims of comparable scope are further examined through the patent office and equally discovered to be patentable, that’s further symbol of the effectiveness of the patent in lawsuit.”

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4 Times To File A Continuation Patent Application
By Erin Coe
Law360, San Diego (March 17, 2016, 2:00 PM ET) — When inventors are looking to protect
an innovation, a standard patent application may not be enough, and a continuation
application may be the answer to fortify their claims and prevent competitors from
designing around their invention.

While their patent application is pending, inventors also can file a continuation application
that has the same specification but modified or additional claims, giving them the benefit of
the earlier filing date of the original or “parent” application.

The number of continuation applications filed with the U.S. Patent and Trademark Office has
steadily grown over the years, from 31,271 in fiscal year 2009, to 47,447 in fiscal year
2011, to 64,372 in fiscal year 2013, to 76,898 in fiscal year 2015.

“It’s less expensive than filing a new application,” said Jennifer Hayes, a Nixon Peabody LLP
partner. “And the advantages are you can cover different aspects of your invention and may
be able to cover features of an invention that was described in the specification but was not
claimed in the parent application.”

Here, attorneys highlight four times when patent applicants may want to consider obtaining
a continuation patent.

When Planning to File a Patent Application

As inventors prepare to move forward with a patent application, they also should consider
whether there are any continuation patents they may want to pursue.

“I think companies and clients should be thinking about continuation applications as part of
their long-term strategy for developing their patent portfolio,” Hayes said. “When I meet
with clients to talk about the original patent application, we develop multiple patent claims
we could claim in the parent patent application, and also oftentimes pick one or two that
could be important and could be filed in a later set of continuation applications.”

By considering this option at the outset, inventors can identify the key features they want to
have in a parent application that might be approved by the patent office quickly, while filing
broader claims in continuation applications that could take longer to get through the
prosecution process, she said.

“This can be a really important strategy for startups,” she said. “Oftentimes, investors want
to make sure a company has one or more patents. When a company puts narrow claims in
an original application and files for a prioritized examination, it might be able to get a patent
issued in less than a year, and that way, it can focus on continuation applications for
broader claims.”

When drafting the initial application, prosecutors should focus on writing a robust
specification with many alternative embodiments, according to Bradley Van Pelt, a
shareholder at Banner & Witcoff Ltd.

“You should brainstorm with the inventors and try to predict where the technology is
heading and capture that at the time of filing,” he said. “This can give you flexibility to craft
valuable claims in continuations.”

Starting with narrower claims in a parent application makes sense because once the
examiner allows the parent case, he or she will be more favorable to the child application,
where the applicant can present broader claims, according to Van Pelt.

One disadvantage of continuation practice is that examiners are still searching for and may
find prior art in a continuation proceeding that was not discovered during the prosecution of
the parent application, according to Linda Thayer, a partner at Finnegan Henderson Farabow
Garrett & Dunner LLP.

“If the record reflects that this piece of art is potentially relevant, and the continuation
contains claims that are closely related to those of the parent, it may cast a cloud over the
parent,” she said. “[But] it is still preferable to know about the prior art than not knowing
and finding out during litigation that the parent patent is invalid. Finding out during
prosecution of a continuation means that the claims of the parent could be amended and
strengthened in the continuation.”

Instead of making minor changes to a continuation application, prosecutors may want to
draft claims using different language from a parent application so that it would not be as
obvious whether art cited in a continuation proceeding brings into question the validity of
the parent patent, she said.

While there is some risk involved in pursuing a continuation application, not filing one may
be the biggest of all, according to Les Bookoff, a co-founder of patent counseling and
prosecution services boutique Bookoff McAndrews PLLC.

“Once the parent case issues, you won’t have the co-pendency requirement for filing a
continuation application,” he said. “Years later, when the technology has developed and you
could have mined the claims to get something really good, there is not going to be much
recourse at that point.”

When the Technical Field Is Evolving

Having a continuation application in the works also can be beneficial for inventors that are
still developing their products to determine which features may be the most important and
where the market may be trending, according to Hayes.

“Filing a continuation application gives inventors time to see where the industry is headed
and what competitors might be working on so that they make sure that they are covering
the key features of products as well as features that competitors and other industry players

are potentially interested in,” she said.

Oftentimes, when startups are still in the prototype stage with their products, the filing of
continuation applications assists them in aligning the patent claims with the products
actually on the market, she said.

“When they are doing an original patent application fairly early in the design stage,
companies often through the design process come up with a product that is slightly different
or more than slightly different than what they originally started with,” she said. “A
continuation application gives them an opportunity to develop a product and file claims that
more closely match the product that makes it to market.”

Another advantage of going through the continuation process is it gives inventors extra time
to digest the prior art in the field, according to Hayes.

“After going through the patent office with a parent application, inventors can get a better
understanding of the prior art and what others are working on,” she said. “In a continuation
application, they can tailor their claim set faster and more quickly identify the innovative
features that are disclosed in the original patent specification.”

Continuation patents can build on inventors’ efforts to prevent competitors from simply
designing around an invention, according to Bradley Hulbert, a co-founder of IP firm
McDonnell Boehnen Hulbert & Berghoff LLP.

“By claiming an invention in different ways, it’s harder for a competitor to take the basic
idea and design around it,” he said. “It adds another stake in the picket fence around your
invention.”

When the Law Is in Flux

Another instance in which inventors may want to look at continuation applications is when
core patent laws and how they are interpreted by authorities are in a state of limbo.

For instance, in Alice Corp. v. CLS Bank International, the U.S. Supreme Court in 2014 held
that abstract ideas implemented with a computer cannot be patented under Section 101 of
the Patent Act, and the decision has been responsible for a wave of software patents being
invalidated at the courts and the patent office.

Patent applicants with software claims may want to file continuation applications as the
courts and the patent office continue to flesh out what is patent eligible subject matter,
according to Hulbert.

“Inventors may want to file continuation applications while they wait to get guidance on how
courts want software claims to be constructed,” he said. “Inventors can draft claims in
different ways, such as by claiming the hardware, input processes or output processes of a
software invention. That gives them flexibility once the Federal Circuit gives more guidance.
By having different variations of claims, at least some claim subsets may hit the mark in
terms of what the Federal Circuit later advises it is looking for.”

The option of a continuation application can be helpful in keeping a patent family alive in the
face of changing patent laws, according to Thayer.

“With the passage of Alice, more patent claims have been found invalid as patent ineligible,”

she said. “If the patent is a member of an open patent family, and there is sufficient
supporting material in the specification, the claims — amended to comply with the most
recent guidance — may be able to be refiled in a continuation.”

When Involved in Patent Litigation

If a patent owner is currently bringing an infringement suit or its patents are being
challenged in a post-grant proceeding at the patent office, it can be advantageous to have a
pending continuation application so that related claims can be modified based on what
arises in those contentious proceedings.

“It’s useful to have a continuation application to be able to come up with claims of different
scope and to either capture what the accused product is or avoid prior art references that
are discovered in the course of litigation,” said Jeffrey Snow, a partner in Pryor Cashman’s
IP group. “If related claims of similar scope are further examined by the patent office and
equally found to be patentable, that’s further indication of the strength of the patent [in
litigation].”

Having a continuation application increases the value of the patent application or the patent
family as a whole and makes the patent or family more attractive to those seeking to
litigate, according to Thayer.

“If additional prior art becomes known during litigation or post-grant review, the claims may
be amended and the art cited in the continuation application,” she said. “The flexibility —
and the unknown of what claims may issue in the future from any continuations — is one
factor that may weigh in favor of settling when a defendant is faced with an ‘open’ family.”

During prosecution, attorneys must be mindful that claim amendments and arguments
made to overcome rejections of a continuation application can be used in litigation of the
parent patent as a way to limit the scope of the invention or to argue that the construction
of the claims should be relatively narrow, according to Hayes.

“Prosecutors should be cognizant of the potential risks of arguments and claim amendments
made throughout the patent portfolio, and they should be consistent in their arguments and
responses,” she said.

–Editing by Jeremy Barker and Kelly Duncan.
All Content © 2003-2016, Portfolio Media, Inc.

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