Continuation Practice

By: Josh Sloat

A Lifeline to Future Self

There’s not a more important concept that’s more widely misunderstood by those newer to patenting than continuations. So we’re dedicating Part 3 of our series on quality patents to everything you need to know about this essential step for future proofing and increasing the value of your portfolio.

Void of pursuing continuations, the language of your patent is frozen in time at issuance. The specifics of the enforceable boundaries of your protection are forever fixed to the claims you chose to pursue with your initial application – but not necessarily with the full breadth of your invention as conceived. For many reasons, practitioners and inventors will often choose to limit how much of an invention is claimed in an initial application. But then the future happens. Case law changes. New competitors arise. New prior art surfaces. And challenges may come in the form of litigation or IPRs as we discussed in our last episode. With a closed family, all you can do is hope you had the right foresight to predict this future with your static document.
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Continuations, on the other hand, allow patent owners to keep patent families open – in other words, not textually frozen in time at issuance. When done right and timely, the patent family becomes a series of living documents, allowing a patent owner to claim and capture the full scope and breadth of the conceived innovation, but with the benefit of hindsight, known R&D outcomes, and changing market conditions.

More Robust and Valuable Patents

​Keeping a patent family open comes with significant long term strategic benefits that can make your patents considerably more robust and consequently, considerably more valuable given the ongoing strengthening options they provide in terms of defensibility and assertability. As the panel will discuss in depth today, continuations keep options open for proactively and defensively helping to hedge against case law changes, working as prior art backstops with the PTAB, and in opening opportunities for drafting new claims to square more directly on infringers in a dynamic, competitive landscape. As an added bonus, especially for startups, continuations can also make patents more budget friendly up-front if done correctly.  

We frame things a lot on this podcast in terms of doing kind by future self, but continuations are the closest equivalent of past self grabbing a life line to toss out to future self in a time of need!
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Episode Overview: Quality Patents Part 3

Ty Davis, Patent Strategy Associate at Aurora, and co-host Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, lead today's discussion with our all-star patent panel delving deeply into continuation practice. Along the way, Ty, Ashley, and the panel discuss:

• The basics of continuation practice and its strategic benefits
• Types of continuation applications and how and when each applies
• The close cousin concepts of terminal disclaimers and prosecution latches
• The potential unfortunate consequences of the recent Sonos v. Google decision regarding a very common use of continuation practice

Ashley and Ty are joined today by our always exceptional group of IP experts, including:

• Dr. David Jackrel, President of Jackrel Consulting
• Kristen Hansen, Patent Strategy Specialist at Aurora
• Daniel Wright for his re-debut on the podcast, returning this summer to Aurora as a Patent Strategist

​Mossoff Minute: RESTORE Act

In this month's Mossoff Minute, Adam discusses the introduction of the RESTORE Act. This is an exciting new piece of legislation aimed at restoring patent owners’ abilities to obtain injunctions to stop infringers from continuing to steal innovations after being found guilty of doing so. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
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How to Listen

Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
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Resources.

To further explore the topics discussed, see the following past episodes and resources:

Related Episodes

• PTAB Survival Guide: Quality Patents Part 2
• Crafting Quality Patents
• Patent Claims: The Name of the Game
• Patent Anatomy: What's in a patent?​​
• Patent Wars: Innovators, Revolutionaries, and the Race to Reform

Related Reading

• Patent Anatomy: What's in a Patent?
• Restoring Injunctive Relief

Transcripts​
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