Clients of mine know that one of my mantras is: ‘pendency is your friend’. There’s no such thing as “a” patent application – not if you care about staking out meaningful IP rights on technologically demanding subject matter. The minimum “unit” of practicable IP protection is not a patent, it’s an application chain that is kept pending. If you get a patent issued, that’s great, especially if it has strong claims. But whatever the claims, if a patent is worth paying maintenance fees on, it’s worth the (relatively) minor cost to keep the application chain pending.

In this post I’ll explain why. (I’ll leave the details of “how” for another time, except to say that you simply make sure to file a continuation or continuation-in-part application before the current application gets issued as a patent.)

First, it’s essential to understand how the specification and the claims differ in scope and content:

  1. The specification – the written description and drawing figures — can be as broad and wide-ranging as you care to make it. It can be a 100-page dissertation on every conceivable way of using anything resembling your inventive concept for any application that it could conceivably be used for. In other words, in the spec, you can stake out as much territory as you can figure out how to describe. And you aren’t limited to versions that you’ve actually built or proven – you can speculate, be prophetic, list all that ways that you can think of that someone might try to design around.
  2. The claims are usually going to be much narrower that the specification. For one thing, the patent office will only examine one “invention” per case, and the PTO defines “invention” pretty narrowly. If you want to claim more than one version, the PTO will likely make you split all but the first into “divisional” cases so that they can charge separate filing and examination fees for each one. And anyway it’s hard to get very broad claims approved because a broad claim, by definition, covers a lot of possible permutations; an examiner only has to find one of them in some obscure prior art reference, and the whole claim is dead.

Therefore, a well-written patent application is typically going to look something like this:

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Two more things you need to know about the specification and the claims:

  1. The specification is cast in concrete. Once the application is filed, you can’t add to the specification. You can’t correct mistakes (except very minor typos), you can’t put in details that you forgot, you can’t “update” it with improvements – whatever you filed on Day 1, you’re stuck with. (You can always file a new case later to cover the improvements, of course, but it will be subject to whatever prior art has appeared in the meantime.)
  2. Claims can always be amended, or new and different claims can be sought, as long as the application chain is kept pending. The claims are limited only by the scope of the specification (and, of course, the prior art and other standards of patentability). You can amend the claims, give them a major overhaul, even rewrite a completely new claim set from scratch, at any time, as long as you stay within the bounds of what you disclosed in the specification – and as long as there is no break in pendency.

Those constraints define the basic strategic game:  the spec can be very broad but you can’t change it; the claims will be narrower but you can always amend them in any way you want,  as long as you don’t go outside the bounds of what you described in the spec – and as long as the application chain is kept pending.

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At this point, you’re probably wondering – why go to all this trouble? Why not just figure out what the claims need to be before you file, and ask for that? Why not just get it right the first time?

Actually, I’m a huge fan of getting it right the first time – I highly recommend it, and many patent applications could benefit from a lot more of it. But remember, at the time you file the application, if you’re filing early enough to have any shot at priority on anything valuable enough for anyone to care about, your state of knowledge is going to be highly imperfect. In particular,

  1. You won’t know exactly what prior art is out there — and there is no way to know, even in principle, even if you’re willing to spend a lot of money on a search to find out, which you probably aren’t. (That’s a subject for another post, but, for example, the most important prior art – other peoples’ recent patent filings – isn’t searchable at all because the patent office keeps applications secret for the first 18 months.)
  2. You won’t know exactly which details of the invention are the important ones to claim. What are the possible design-arounds? What features will the market find compelling? What practical details will turn out to be essential to make the invention work right? At the stage when you need to be filing the application, you don’t know.

So what you have is one of those pesky cost-benefit tradeoffs that come up all the time in business. Yes, you could work harder at nailing down exactly what claims you need before you file. But if you do that, (a) it will cost a lot of money, and (b) it will delay the filing, which kind of defeats the whole purpose, which is to stake out patent priority before your competitors get there.

In most situations, a better strategy is to think of a patent application as a kind of option on an area of technology. Use the specification to get flexibility, by giving broad disclosure of every way of implementing the invention that we can think of, every detail that might turn out to be important. Then we try to get the PTO to go ahead and issue a patent (one or more) on whatever we think our best claims are, to add credibility, so that when we growl at infringers they will see some teeth.

But if we get to the point of needing to sue someone for infringement, the issued claims probably will not be ideal for the purpose, or even necessarily adequate. The reason is, what makes a good claim for an IP portfolio and an ideal claim for an infringement suit can be two quite different things. (Yes, I know, you have no intention of suing anyone, you aren’t one of those patent trolls that we keep hearing about. But keep in mind that the potential infringement liability is what ultimately determines the value of a patent — without the potential to sue an infringer, the value of a patent is zero.)

What we mainly want from portfolio patents is deterrence — credible threat. We want to make it expensive and risky as possible for competitors to encroach in our space. The first line of defense is cost and complexity — when the competitor checks with a lawyer about his or her plans, we would like the answer to be “this is complicated and there is no clear answer — we can analyze it for you and give you an unclear answer, with no guarantees, for which we will need a high five figure retainer.” To accomplish that, ideally we would like to have some fairly broad issued claims — we don’t want to give the competitor clear boundaries that are easily designed around. Also, we have no way of predicting exactly what a competitor may come up with, so we need to deter as wide a range of possibilities as we can.

But if the competitor foolishly decides to charge ahead in spite of our patent, and we actually get to the point of needing to sue, the game changes. In an infringement suit, ideally we would prefer narrow claims that pretty much exactly read on the infringing product. Why? Because, by definition, broad claims cover a lot of territory, and the more territory there is, the more likely your opponent can find some prior art somewhere in that broad territory. And trust me, when your opponent is looking at spending two million dollars or so (minimum) to defend an infringement suit, a very thorough search for prior art will be made.

So as a practical matter, when patents are litigated nowadays, one side or the other nearly always runs to the patent office to try to engineer the case into a better configuration for litigation. The patent office has procedures for such things, but if all you have is an issued patent – you’ve let pendency lapse – your options are going to be very limited. This isn’t the place for a dissertation on post-issuance proceedings in the patent office, but the tl;dr version is, they’re expensive, complicated, and after the recent legislative changes, that playing field is quite slanted against small patent owners.

If you’ve kept the application pending, though, there’s no need to rely on post-issuance proceeding heroics that probably won’t work. You can simply carry on with your still pending application where you left off, amend your claims in whatever way you need (assuming, again, the amendment is supported by your spec, not DOA from prior art, etc.). So you can narrow them down to fit the infringement, amend around any problematic prior art, and get them examined and issued via the normal prosecution process.

In terms of filing fees, a continuation application costs the same as a new application – currently $730 for a small entity, $400 for microentity. If you’re cash-strapped, you can just re-file the same application, with some new claims, so the legal fees can be fairly minimal. Or, you can spend a bit more and take advantage of the opportunity to update the spec to include whatever new ideas have emerged since the original filing. Given current delays in the patent office one continuation will likely buy you at least two or three years of additional pendency, at which point you can do it again if necessary. It’s a cheap price to pay to give yourself a broad, flexible option instead of a narrow, immovable stake in the ground.

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