The Stranger’s Guide on When to File Patent ContinuationsThe Stranger’s Guide on When to File Patent Continuations

According to data released in 2020 by the United States Patent and Trademark Office (USPTO), continuation applications-new patent applications that allow filers to pursue additional claims based on the same description and priority date as a pending parent-have tripled over the past decade.

In-house and private practice counsel say the most likely reason for this rise is that continuations are seen more and more as an effective and fairly cost-efficient means of boosting intellectual property portfolios, at least when compared to applying for completely new patents. Managing Intellectual Property interviewed Finnegan partner Linda Thayer for her insight.

Linda says patent owners should always file continuations because they act as an insurance policy to help keep patent families alive. 'Our default is to always file continuations. If you don't file a continuation then you're stuck with the patent that's been issued.' She added, 'A competitor could contest the claims in court in a way that limits the scope of your patents, or a piece of prior art could come to your knowledge after the first patent was issued that could render said patent too broad and thus invalid.' She says a pending continuation allows a patent owner to go back to the parent application and add more elements to the claims that would allow it to survive a new piece of prior art.

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