Advanced Patent Strategies

• Author: Dylan O. Adams
• Profession: Seattle-based patent attorney
• Pages: 219-235

219

13

Advanced Patent

Strategies

“You have to learn the rules of the game. And then

you have to play better than anyone else.”

—Albert Einstein

Having a patent portfolio with multiple assets can ser ve many pur-

poses. For companies that constantly develop new technology, a series

of patents is necessary to protect continuing innovation. However, as

discussed in previous chapters, it is not uncommon for a single prod-

uct to be the subject of many patents instead of just one. e main

benet of having a family of related patent applications is maintaining

a priority date that stems back to the earliest patent application in the

patent fami ly. A provisional patent appl ication followed-up by a non-

provisional patent application is an example of a simple patent family

because the nonprovisional application priority date extends back to

the ling date of the provisional patent application. If additional non-

provisional patent applications are added to this patent family, these

new applications will also enjoy the early priority date established by

the provisional application, even if they are led years later.

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220 PATENTS DEMYSTIFIED

is chapter illustrates how patent families ca n be structured in

various ways, and how a strategy is determi ned based on many dif-

ferent factors, including the type of technology, the business plan of

the company, the stage of development of the business or product, the

available patent budget, and the need to attract investors or other busi-

ness partners. In other words, patent strategies must be tai lored to the

specic needs of each company.

Applicants that are new to the patent process oen choose a simple

patent strategy mainly because t hey are unaware of the options that

are available and are operating under the common misconception that

individual products are eligible for only one patent or that having mul-

tiple patents i s prohibitively expensive. Moreover, even when option s

are general ly known, applicants and patent attorneys alike a re oen

not aware of the numerous benets that a patent portfolio provides

aside from providing the right to exclude others from making, using

or oering to sell patented technology. e following sections illustrate

the range of options for growing a patent portfolio, and provide some

examples of how these options are applied to create some of the more

common patent strategies.

CONTINUATION APPLICATIONS

Besides claiming priority to a provisional patent application, nonprovi-

sional patent applic ations can also claim priority to other related non-

provisional patent applications with earlier ling dates. In other words,

subsequent nonprovisional applications can receive the priority benet

of earlier ling dates established by related nonprovisional applica-

tions. Such later-led applications, generally called continuation or

continuing applications, take on three main forms—plai n continua-

tion, divisional, and continuation-in-part. Aside from being related to

one or more earl ier-led nonprovisional applications, continuations

are just like a normal nonprovisional application and will receive a new

ling number and wi ll issue as a patent that is completely separate with

a unique patent number.

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