Should I File a Continuation or Divisional Patent Application?

After a company’s patent application is allowed, it is important for the company to consider whether to file any follow-on continuation or divisional patent applications (which are known collectively as “continuing” patent applications).  Filing a continuing patent application based on another, pending patent application provides an opportunity to pursue a broader or different scope of protection as compared to the scope of the current “parent” patent application.  A continuing application may also be used to pursue coverage for different inventive concepts that were disclosed in the parent application.

As a hypothetical example, let’s assume that, in the mid-90’s, Company A filed a patent application that disclosed a razor having three parallel blades as shown below.  For purposes of discussion, let’s assume that the patent application also disclosed an alternative embodiment having four parallel blades and a unique razor handle grip.

In filing and negotiating the first application, with costs and expediency in mind, Company A may have focused only on the three-parallel-blade design and they may not have pursued protection for the razor handle grip.  After their first patent application was allowed covering the three-parallel-blade design, Company A might have realized that sales of their product were larger than expected.  They might have also decided to launch a four-blade version in coming years.

With the above in mind, after the allowance of their first application, Company A may have decided to file a first, follow-on “continuation” patent application covering the four-blade design.  They might have also decided to file a second continuation patent application covering the unique razor handle grip.  If everything went well at the patent office, all three patents would issue as separate patents and would be separately enforceable.  Company A would also have an option to file additional continuation patents at any time before the last pending patent in the overall patent family issues. 

An additional advantage to filing a continuing application is that it maintains the option to pursue different types of patent protection, even after the initial patent issues.  So let’s say that after the four-blade patent issued and while the razor handle patent application was still pending, a competitor started selling a two-blade razor with the same unique spacing that was described in the first patent.  In that case, Company A could potentially file a continuation application, based on the pending razor handle patent application, that specifically covers the competitor’s two-blade patent arrangement.  If that continuation were allowed, Company A could potentially use the new two-blade patent to prevent the client from selling the two-blade design in the U.S., and could even potentially block imports of the product into the U.S.

With all of this in mind, many of our clients maintain continuation versions of their key patent applications long after the first application in a particular patent family was filed.  One example patent portfolio in our practice covers extremely important technology that one of our clients developed for converting recycled bottles into carpet.  They use the process to convert over 5 billion recycled bottles into carpet fiber every year.  We filed their original application in 2011, and they now have an extensive portfolio of patents that cover the technology.  Many of these are continuation applications.  With so many patents in place covering so many aspects of the overall process, it would be extremely difficult to cover the process, and they are going on 14 years of no copying.

Please let us know if we can be of any assistance in providing strategic advice regarding your company’s patent portfolio.  Having an overall strategic IP roadmap in place – including sophisticated strategies on continuation practice – can make the difference between a company maintaining their exclusive position in the marketplace or losing market share as a result of their competitors copying their key technology.