Continuation Practice

9/9/2024

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.

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!

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

Continuations Visualized (Update)

We get a lot of confusion around the concept of continuations, and it’s one of the most important aspects to grok around patent quality. After recording this episode, we created a visual that's been helping the inventors we've worked with since. Some essential concepts around continuations to assist with the visual:

Claims define the property right. Claims are the heart of an application and point out the exact invention boundaries of the idea space the applicant believes she’s entitled to own.
The specification captures the entire conception. The specification is another part of a patent application that describes the invention and provides context for interpreting the claims. A broadly drafted specification is meant to capture the entire breadth of the application, as conceived by the inventor.
Claims are a subset of the conception. Claims are the specific aspects of that conception that you choose to pursue in a particular patent application, so typically, your claims are a subset of your conception, as defined in the specification. As discussed in this episode, practitioners and inventors will often choose to limit how much of an invention is claimed in an initial application.
Continuations keep conception options open. Continuations allow you to always essentially keep your specification – or the entire breadth of your conception – pending, so that you can protect those additional elements with new specific claims, long past your original set of claims in your original filing. This is what allows you the flexibility to respond to new competitors, case law changes, the discovery of new prior art, IPRs, etc.

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.

How to Listen

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Resources.

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

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