Importance of Filing a Continuation Patent Application

After an inventor files a patent application that is subsequently allowed, the claims of such application are “granted” and published.  In such state, these claims are typically “fixed”, meaning that they cannot be substantively changed over the 20 years of patent term, absent extraordinary circumstances and/or procedural effort.  The challenge with this is that the market does change over such 20 year patent term.   Thus, while the aforementioned patent claims of today may seem fine for today’s market, they may be less-suited for tomorrow’s market changes.

This is where patent continuation practice plays a key role.  Continuation practice allows an inventor/patent holder to “continue” pending status (for the life of such application).  By maintaining such pending status, the inventor/patent holder is able to enter new claims based on the originally-disclosed subject matter and priority date, thereby affording any flexibility that the market requires.  

However, there is a very important catch. An inventor/patent holder must file any continuation application while a previous patent application is still pending, e.g. before the final grant of such previous application.  This deadline is NOT extendible, and occurs EACH TIME a previous patent application is due to cease its pending status by being granted, abandoned, etc.

Thus, a “golden rule” for Oso-IP is that all important patent families should have a pending application at all times, to afford flexibility in entering new claims to adapt to ever-changing market conditions.  The value of the overall patent portfolio depends on it!