Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
Continuation Practice: Quality Patents Part 3
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.
** Episode Overview **
⦿ 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
** Mossoff Minute **
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.
** Discussed Links **
⦿ Quality Patents Part 1: https://www.aurorapatents.com/blog/quality-patents
⦿ Quality Patents Part 2: https://www.aurorapatents.com/blog/ptab-survival-guide
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
** Follow Aurora Patents **
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Thanks for listening!
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Note: The contents of this podcast do not constitute legal advice.
[00:00:00] G'day and welcome to the Patently Strategic Podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion amongst experts in the field of patenting. It is for inventors, founders, and IP professionals alike, established or aspiring. And in this month's episode, we're talking about continuation practice.
In our firm's experience, we've found that there's not a more important concept that's more widely misunderstood by those newer to patenting. So we're dedicating part three of our series on quality patents to you. to everything you need to know about this essential step for future proofing and increasing the value of your portfolio.
This is such an impactful patenting concept that we half joke internally that along with not performing prior art searches, the not recommending continuation practice in most cases should be considered malpractice. Void of pursuing continuations, the language of your patent is frozen in time at issuance.
You can sell that patent, license that patent, and stop others from making, [00:01:00] using, selling, importing, and exporting your invention during its term, but the specifics of the enforceable boundaries of your protection are forever fixed to the claims you choose to pursue with your initial application, but not necessarily with the full breadth of your invention as conceived.
For many reasons we'll discuss, including budget and patent law constraints, 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 services, 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 [00:02:00] scope and breadth of the conceived innovation. But now with the benefit of hindsight, known R& D outcomes, and changing market conditions. And you get to do so without losing the benefit of the original filing date, which is crucial. 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 a lot of things on this podcast in terms of doing kind by future self. But continuations are the closest equivalent of past self grabbing a lifeline [00:03:00] to toss out to future self in a time of need.
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, and 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 Jackrell, President of Jackrell Consulting, Kristen Hansen, Patent Strategy Specialist at Aurora, and Daniel Wright for his re debut on the podcast, returning this summer to Aurora as a Patent Strategist.
And if you feel like you're missing any context around important concepts the panel discusses, like patent claims and the specification, I highly recommend you check [00:04:00] out our Patent Anatomy episode from Season 1 and our more recent series on claims. I'll be linking to those in the show notes as well.
Now before jumping in with the panel, we'd like to take you to the next installment of the Mossoff Minute, a monthly segment that builds on our Patent Wars episode and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements and patent reform. Significant court rulings, innovation policy happenings, and occasional Star Wars references.
In this month's 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. The big news in patent policy, uh, is that the RESTORE Act was introduced in Congress on July 29th.
Restore brings back, it restores the original doctrine that had existed in this country from 1790 until 2005, that a patent owner receives an injunction [00:05:00] on finding of infringement of their property rights. Continuing ongoing infringement that can have defenses applied against it, but that the general presumption in the law, it's called a rebuttable presumption is that you receive an injunction for continuing infringement.
This was changed in 2006. by the Supreme Court in eBay decision, a very famous decision or infamous, uh, eBay has a result of changing the law, creating a new four factor test, has made it much harder for patent owners to obtain injunctions. New research shows that well over 90 percent of infringement for, uh, patent owners who licensed their patents and even patent owners who manufacture their patents, two thirds of them are unable to obtain injunctions.
This is devalued patents. As an asset class in the innovation economy, it has made it much harder to commercialize one's innovations in the innovation economy because people now know that they can take your inventions and they can use them [00:06:00] without being held accountable. This is the same problem you would imagine if you own a house and someone could sleep in your bedroom and you couldn't kick them out because that's what an injunction gets you.
Of course, that would devalue your house if you tried to sell your house or to use your house for other purposes. And the same problem has been facing patent owners since 2006. And the Restore Act will change this law, restoring us back to the original doctrine that drove our innovation economy, that made the United States a global tech leader and secured us against global competitors like China.
Thanks, Adam. We've also published a blog post that includes recent injunctions related research studies conducted by Adam and others, as well as links to the bill, its one pager, and everything you need to know about one of the biggest problems plaguing patenting and the innovation economy it enables.
I'll link to this post in the show notes, and we'll be sure to keep that page updated as legislative developments occur. We're also publishing clips from the Mossoff Minute as short form videos on Instagram Reels, YouTube Shorts, and TikTok. [00:07:00] You can check out these shorts and follow us at AuroraPetents on all three platforms.
And now, without further ado, take it away Ty and Ashley. Today is continuation practices. I think this is a, uh, I'm excited to give this, you know, to, to talk about this. I know in like a previous life, you know, I remember being a part of an engineering team meeting, um, on a little startup. And that was prior to, to Aurora, but I remember, uh, You know, our capstone technology application, our, the firm at the time that was, you know, helping us on IP coming to us and saying, hey, um, you know, have you considered continuation?
And I can still remember, you know, talking over in the engineering meeting. They never really explained the benefits, um, Continuation, so we kind of I remember looking at it like they're trying to squeeze more money out of us, you know, so [00:08:00] and looking back, I'm like, man, you know, we definitely we we made a the most important.
Crux of the invention, static and not dynamic, you know, and kind of set in stone. So, um, today was going to go over continuation practices, you know, what, what they are, um, the timelines thereof, types of continuations. You're going to really drill into the benefits of continuations and hopefully through the panel, you know, we can kind of cover all of them.
Um, and then, you know, it's hard to discuss continuations without terminal disclaimers. And then Ashley was going to go over prosecution latches. Getting right into it. So what is continuation practice? And that, that is filing an additional patent application based on a previously filed application. Um, and typically that's referred to, uh, basing a child application on a, on a parent [00:09:00] application.
And why we do it, uh, is to enable modification of claims, extend patent protection, and also enable strategic response to new prior art or market developments. And then, you know, the biggie out of all this is we can do all of this while, um, not losing the benefit of the original filing date. So, of course, with, with, uh, IP, The earliest original filing date is is super crucial, um, and let's be clear to let's I don't want to interrupt, but I want to, because this is really important, um, extending patent protection does not mean going beyond your 20 years initially set in the sand, but it does mean getting.
improved, narrower, sometimes broader claims and different claims that can basically put, you know, fence posts around your original invention so that you have [00:10:00] a broader scope of what you can cover and what you can protect from what a competitor might. That's a good distinction. Yeah, it's still the 20 years, but you know, but you're getting more patents to protect more ideas, um, more details, more variations.
Even if not subject to a double patenting restriction or rejection. Yes, yes. Well, yeah, I'll get a patent term adjustment, right? Each without a terminal disclaimer, patent term adjustment could extend differentially for each. Application, but it's not going to be, you know, minimally versus a 20 year term, right?
So it might be 20 years, 20 and a half or something, but it's going to be, you know, not huge. I mean, I think I've seen, you know, sometimes I've seen like 1000 year PTA adjustments, but 1000 year 1000 day 1000 day [00:11:00] PTA adjustments. I think most of them are like on the double digit. You know, maybe triple digit side.
Yeah, so you keep that 20 years, no matter what con you file, unless you file a CIP, and then that's a little different. We'll get into that later, but you keep that 20 years and it ends, plus or minus PTA. And if you have a terminal disclaimer, it's the same concept in the same date ending, but there are other consequences.
Which you'll get into later. Yep, no, Thank you for expanding there. That was very good. So, continuations can be filed at any point while at least one patent application in the patent family is pending, and they can be filed in different sequences. So, as we alluded to earlier, you have parent child, you could do, you know, in parallel where you have two or more sibling applications that are.
Claiming the priority benefit [00:12:00] of a parent or a combination thereof and, uh, why we do it. This increases portfolios value. Buyers put a a premium on portfolios which are still pending. So timing, um, A continuation can be filed before the patenting, abandonment of, or termination of proceedings on the parent application, um, and has the same effect as though it was filed on the date of the parent application.
And what you mean by filed before patenting or abandonment or termination of proceedings is all the way up until the issuance date, which means you could pay the issue fee. And your issuance certificate would come out and say this is going to issue in three weeks or six weeks, whatever it is. And at that day, that's your drop dead day to file continuation or a [00:13:00] divisional or a CIP.
Good point. Yep, could be the day after you filed all the way up until, like you said, right before issuance. So types of continuations. Uh, first being just your regular continuation application. Uh, you are, you are subject to your initial disclosure. Um, no, so that means no new matter to be added, but you could pursue matter unclaimed in the previous application.
So expanding, you know, as we all know, a lot of times the, the matriarch of a. patent portfolio has the kitchen sink thrown in it. Um, so this gives you the opportunity to squeeze as much juice out of that piece of tech as possible. Um, divisional, once again, no new matter, subject to the initial disclosure and can be filed after a restriction requirement issued by the USPTO, in which the USPTO [00:14:00] indicates That there are separate and distinct inventions.
So up until the issuance of that Parent application. The applicant can't can pursue these separate distinct inventions levied by the USPTO and the restriction requirement. And that's separate and distinct in the claims. I think sometimes people get confused. I had clients ask, you know, um, if we include multiple inventions in a specification, like, related, but multiple inventions in a specification, sometimes they think that the patent office is going to say.
Figures 1 through 2 are 1, figures 3 through 10 are another, and figures 11 through 15 are another. And it's not, I mean, you can get into species selection, that's getting into the weeds, but in general, it's not the patent office. It's picking through your spec and your figures to say these are separate and distinct.
It's based on your claim set and they're [00:15:00] saying your claim set has, you know, two or more separate and distinct inventions. So their admission that these are different and that's what allows the divisional to occur. Thank you. Yep. And then, yeah, those, those, uh, pursued in the divisionals do have the priority benefit of the, the parent application.
And then the third being continuation part. This is where you can add new matter. Um, and you can tie common subject matter. Between the continuation in part and the parent all the way back to the, um, original filing date. And this is where, you know, when you're, you're dealing with, as we all do technology that evolves, um, research and development can kind of be captured in, in continuation in part.
The distinction there to [00:16:00] be anything that is new matter gets the date of filing of the new matter, right? You can't have all the way back to the parent date. So new prior art will come up. And you'll just either have to have something in your specification claims to get around that or you'll have to amend your claims to get around that new art that would be called intervening art that happens between the parent filing and the new matter filing.
so benefits of continuations. We have kind of really no rhyme or reason for the order here and I figure can I touch through these and then I'm sure through the panel we can kind of pick up whatever I missed, but these were just kind of a train of thought as far as. Why, why we file continuations? So extended pros, prosecution time by filing continuations, uh, that flexibility can keep prosecution alive [00:17:00] or the prosecution process alive, allowing more time to refine claims and respond to U-S-P-T-O rejections.
Uh, and that also affords a adaptability, which extends timeframes, which helps for the adaptions to changes in, in technology and, and marketing conditions. Next being broadening claim scope, um, claim refinement. So, by filing continuation applications, this allows for the adjustment and broadening of claims based on new insights, prior art references, or developments during, uh, prosecution, and we can extend claim sets through continuation applications to pursue, uh, different aspects of an invention in the future.
Um, in separate continuation applications, providing extensive protection. Okay, I think this is important to just to, like, further highlight because, you know, really the only if you want a [00:18:00] broadening Without doing continuations, if you want a broadening amendment in claims that were basically already issued, the really only other option is a reissue and you have limited, you only have a 2 year window after issuance to do that.
And you also have to forfeit the original patent to get that potentially get that broadened. New patent that reissued patent and so continuations are a great way to avoid having to do that because you can, um, you can always have that option to do it then without having to forfeit the original patent and go through that reissue process.
That isn't guaranteed. Yeah, reissue is scary. Yeah, I mean, I don't do them very often. The only time I've ever done them is when I'm looking at an allowed or issued claim set that I maybe didn't do and it's extremely narrow in a way that was [00:19:00] unnecessary. Or we have a competitor that is doing it exactly the same way, and they were maybe first, and we want to broaden it in a different way than narrowed it to get around that to avoid litigation, but I just don't do it very often.
And maybe that's just my practice. I mean, does anybody else have any. Different behavior. No, I mean, I think in my 10 year, I think I've only seen it done. 1 Steve stop is not here today. Did a interesting did a reissue for a client and then actually did a reissue continuation, which is possible, but it's really, you know, far reaching weird corners of the patent world where you really got to.
You know, dot your I's cross your T's because I think you have to get like new reissue declarations and other weird stuff. Like, you can't, um, [00:20:00] but no, I mean, it's if you keep that continuation process, you know, it should be a rare event. I think in most law firms that we've worked with, it's a rare, like, the reissue deadline is essentially like a non event.
One thing I will say for continuations is if, if you are looking to save a little bit of cost. in very similar ideas that really only either add small amounts of refinement within a CIP or add no refinements and you just happen to describe it in the original so you can file a con. The kind of benefit of that will save you a little bit of cost.
You will not have to have a whole entire new patent application drafted for you. Uh, you will not have to have anything but a claim set drafted for you and maybe some discussions with your practitioner. So this, this is easier to keep alive. It's less [00:21:00] expensive to keep alive than various separate filed applications, but if you have to file separate New applications with new specifications that have to be drafted.
It's typically because your ideas are so markedly different that you, you really need to get new content on the record. And so you have to file a whole new application and draft a whole new application. But if you had a really good parent application, it was very verbose and you had. You know, you thought through a lot of the design arounds and a lot of things that you could do with your actual invention, um, continuations become kind of a no brainer and pretty easy.
The only cost that comes in that starts to add up over time is the fact that you're going to have several of these in maintenance fee structures for 20 years. So that can come back and be a cost, but it's also a lengthened cost you can plan for. Um, so I find these actually kind of budget conscious. [00:22:00] Uh, as well as just really good for the portfolio.
Great ad. The next, um, strategic claim drafting. So, the benefits of, of filing continuations is, gives you the opportunity to actually target competitors that may, Share your technology space. Um, claims can be crafted to to cover, you know, competitive betting products or emerging technologies more effectively.
Spoiler alert, we'll be talking about that later. How that can go awry. Yeah, and then we also, uh, we get the benefit of hindsight. Through continuation practice. Um, so potential infringing products may be mapped such that newly drafted claims directly upon them. Um, and market changes, you know, we already previously alluded to this, but, um, continuations enable.
Claims to be adjusted based on shifts in the market [00:23:00] or new applications of, of the invention portfolio. Um, and then changing case law, this one's kind of interesting, but as you know, to be able to roll with the punches, so to speak, um, continuations can be continuation strategy can be used to modify claims to, to.
better align with new and prevailing case law. Yep. Agreed. If you look at benefit of hindsight bullet, that is usually something called an interference where you're putting specific claims drafted to a competitor's product on file in order to evoke an interference proceeding. Um, but it doesn't have to be.
Sometimes it is. Uh, subtle enough that it does go after exactly what they're trying to do in order to push them out of the market with it or out of the patent that they already have. And sometimes it's just a way to serve a cease and desist, say, Hey, we have this, you seem to have crampled into our, [00:24:00] our area.
Yeah, we actually saw where, um, kind of recently a, um, A competitor copied the claims and he's from one of our clients products and essentially got. The claims allowed, um, and that was the, to your point, Kristen was kind of the point of their, um, you know, then starting their litigation, um, on that client, uh, to kind of basically say, see, we had support for you in our pen application for your claims, you know, um, so, yeah, it's interesting.
Some definitely, uh, chess plays there. There are, and it's nasty. Um, this is something that you want to use pretty lightly unless you're a heavy hitter and you're willing to litigate everything, right? It's, it's, it's expensive. Let's put it that way. Put this slide just to hammer [00:25:00] the point home that, you know, major benefit of continuations is preserving that priority date and patent practice.
It's all about who filed first. So maintaining that original filing date is. Is crucial and really the capstone of of continuation practice it is. And in fact, sometimes I will lay that out in the beginning, even when we're filing the parent application and I will say, okay, this is laden with three or four concepts that I think you could file a continuation on later.
And. Then when we come to issuance, I say things like, here's the four concepts, put them in order. How do you want to go after continuations? And so as a practitioner, if you think about that ahead of time, you can build that into your specification, which one avoids you having to go reread the specification at issuance again, and it.[00:26:00]
It avoids kind of a confusion or the quick turn questions that come at you from clients that are like, well, what are we going to do? What do we do now? And you can quickly respond with a, well, we have these four things and we let's set up, you know, some discussion time instead of I have no idea. You could follow a continuation.
I guess, you know, this comments that don't make people feel very confident in your abilities to. Pay attention to their portfolio and assess what's going on. So I find if you do some of this up front and you plan for it and you, you also warn them that, you know, these additional costs could come later if you choose to go down these roads.
Right? It's I find clients appreciate that. Yeah. So I'll build on that a little bit. Exactly. I mean, There are, for sure, patents that are very narrow and very focused on one particular thing, but a lot of times, especially first, second, early patents from companies, they're looking to protect their ideas and [00:27:00] there end up being a lot of variations or totally like left turns, different alternative embodiments for ways to, um, um, Solve a problem, right?
And, um, I've had clients sort of a little confused. Wait, we have all this stuff in our specification. I thought that was protected. No, the only thing that's really protected is what's in the claims, right? And so by keeping the family alive by filing continuations, exactly like Kristen was just saying, you can Can cover all of the things that you have in your specification and if the flip side of the hat right is if you don't file any continuations, the only thing you can prevent others from doing is what's in your claims.
Meanwhile, you've described all these great things that are now public domain. And anyone can use, no one can patent it. You can use it too. So there's still a benefit. No one can patent it out from under you. No one else can [00:28:00] claim that because your publication is prior art, but, um, it's not protected. It's, uh, you're giving anything you don't claim and you describe in your specification is you're giving away to the public for free.
And so, um, yes, continuing, especially in these. You know, the extreme case you might call an omnibus application where you describe 10 different pillars of your technology and you only claim one, that's a, that's a big hole. And then those are, and continuations at prison, like you were saying, absolutely.
When, when, um, a client has something like that. Always talk to them about it up front and say it. We could file 300 claims right now and get a restriction requirement. You'll pay excess claim fees on all of those and get restriction requirements that you still only get some small number issued, but the better way to do it is to.
Look it out in different continuations, different applications, and as Ty said earlier, it could be in [00:29:00] parallel, could be in series, could be combinations of this, um, et cetera, yeah. Spoiler alert, that's shifting paradigm, that paradigm might be shifting, who knows, about not doing the 300 claims that Perrantin said, doing continuations that Perrantin said.
We'll get to that.
I think one of the things about continuations is for clients to be on the lookout for is if you are getting a continuation claim set from your practitioner and it only changes one or two words, that's a red flag. You may be, unless it's, you know, Something that you absolutely want covered, right? If you're changing, like, this type of sensor to that type of sensor, maybe the original should have said sensor, not sensor type, right?
So that could be legitimate, but. Often you [00:30:00] want to see some thought put into exactly what you're going after in a continuation and that's usually an entire line item, maybe all of the line items in a claim, maybe just two. It can look different depending on the invention, but I would caution you as a client to ask questions if there's only one or two word changes in a proposed new continuation claim set for you.
From the next, whenever I think of continuation strategy, I kind of. tend to overlook this side, but I can see how it's a, it's a very big tool in the toolbox, um, prior art proofing your portfolio. So if in the event you have unconsidered prior art, a continuation application may be issued in light of that prior art, um, unconsidered in the, parent's prosecution.
So it's, it's a way to remove fodder, um, for, you know, an invalidation proceeding, for example, an inter partes review. Um, [00:31:00] like I said, this is just one that don't, I, it doesn't come to the top of my mind when you, when you say continuation strategy, but I mean, I see how it could be very, very useful. Yeah, we've, I know we've used it for a couple of our clients even to where, um, they've gotten broader claims in the United States, but then have a, you know, decently tough go of it in, like, Japan, for example.
And so, as, like, a CYA, cover your bases, you know, why not? Let's do really similar claims that were issued in Japan, get similar ones in the US. Just in case, right, because you kind of go into these countries with kind of the same plan, right? We're going to this is the claims that we're going to pursue these are the amendments that we're going to make, but every country is a little bit different has different requirements to get different examiners that are tougher.
And so sometimes you might want to port those or, like, we had another client to where. Um, an examiner found. You know, he [00:32:00] considered some earlier filings in the client's same portfolio as priority against their later stuff. So then you can, you know, pursue broader claims in the earlier stuff, but also then, you know, do more narrow claims in the later stuff to kind of remedy those issues too.
So foreign prosecution can really. We're gonna go through the whole process of making a copyrighted version of the newspaper. We're gonna talk a little bit about like copyright protection and how that kind of affected the policy comparison of the media. We're gonna go through all the technical details.
You might hear a little bit about uh Crickets radio. But I mean again, you're going to be hearing from me. But um, it's all about what obvisously you don't want notifications from other situations In continuation practice, whereas in divisional practice in most other countries, it does have to be sufficiently distinct.
Like, to Kristen's point, you can't change a word or 2 in Korea and South Korea and get that patent claim issued. You need to really have a, you know, reasonably, substantively different claim to get issued individuals in these other countries. [00:33:00] And so this practice is quite unique to the US and does after more latitude than.
Many other countries. Um, yeah. So once again, defensive patenting continuation applications great for blocking competitors. Um, and we kind of already this is a little bit of repeated, but, um, yeah, creating a robust patent. portfolio that deters competitors from entering the market. So in my mind, if you're, if you are squeezing every drop of juice out of that orange, um, somebody might have a hard time seeing the opportunity to create orange juice of their own.
So, um, that litigation leverage, a family of continuation applications can provide multiple patents, increasing leverage and potential litigation or licensing, but. Once again, this, this could be changing the family of continuations as [00:34:00]you mentioned earlier, like, um, a family that has an alive case is more valuable for someone who's potentially going to acquire your IP or that family.
And I think this can be a big reason why, because. Whoever might want to acquire your patent probably potentially has different reasons different uses for that patent than than the original company did the original company may have tried may have been trying to develop commercialize a product and so they were trying to protect their product whereas an acquirer.
Might see this patent as an asset or a way to litigate a competitor or a way to craft claims against a particular competitor in a field that this original company wasn't didn't know about or wasn't interested in and so by filing continuations and. Continually filing continuation so that there something is always alive allows someone to when they acquire the portfolio to [00:35:00] write new claims for their own purposes and those purposes may be litigating someone or blocking a competitor that wasn't of interest for the original company.
So these are I think it's really interesting. Yeah, and so to Dave's point, What we try to do with clients is, is let them know you have the ability to file a continuation here at something that's maybe allowed, but you also have these maybe four other applications and if the one that's allowed isn't as important to you.
technology wise, maybe it was just a tangential product, then maybe you wait to spend the continuation money on something that you are looking to sell, license, or somehow have acquired in the future. Um, and so you can make decisions like that along the way. But I always try to tell a client, if we do not file a continuation for this subject matter right here in this application that's allowed, it is now [00:36:00] dead, you still have the patent, you still can sell the patent, but you cannot open prosecution or open anything that's related to the patent of what's, of what's described in that patent.
It's done. And that tends to give them a little pause and say, okay, I have to really think about it. Um, but if they tell me this is a. Product that was a whim and we never went down that route and we changed everything and we did this thing instead. I'm much more comfortable with the, we don't want to file a continuation discussion, right?
So it's. always in context. I think the other, you know, what we kind of do sometimes, I know we're not the only firm that does this, but, you know, doing the, like, there's not really many ways in the USPTO to slow things down. Like, once you're on the train, you're on the train, you can expedite, but you can't slow the train down.
But one thing that we do sometimes do for clients is you, you know, you try to slow the continuation [00:37:00] by, you know, filing it, Potentially right, right before the issue date, you know, the last possible day and maybe you don't pay fees. So that causes, you know, instead of the patent application going, you know, kind of straight path through the patent office through all those checks and balances, it actually gets diverted and says, Oh, wait, look, they forgot to pay fees.
And then the patent office kicks us back and notice that says, Hey, you forgot to pay fees. And then you're like, Oh, shoot. Now I have two month window to pay fees. Um, So, you know, how much that actually slows it down. Like, I don't know if there's any data out there about it, but, you know, seemingly it would slow down the process a little bit because it does have to kind of take a pit stop to do the fee thing, get a response from you, verify that response, and then get back on the track.
And so there are some ways that you can seemingly kind of. Slow something down, um, to maybe, you know, delay some of the costs and things like that. If you're less sure about it. Yeah, I mean, even even extensions of time costs and options [00:38:00] are going to cost you less if you if you want to take all 3 extensions, for example, that's going to cost you less.
Over a chunk of time, because you'll get to pay it piecemeal, or you'll get to at least save for your office section. Plus your 3 extension fees, which are nowhere near the cost of an office section. Typically, if you slow it down that way. It only makes sense if you really are looking to extend your portfolio, extend and over your cost or push your cost over time, and it isn't super important that the application become allowable quickly.
These are all things you can do. It, over time, it costs you more, except for the delayed filing fees. Um, well, even then it costs you more, but it's not that expensive. Um, But sometimes that's what you want. You want to extend the time you have to pay the fees. You want to extend the time for legal costs, right?
Yeah. Yep. Another tool [00:39:00] for the toolbox. Well, I'm going to touch on these, um, last two benefits kind of quickly. I mean, we've already, we've already touched and expanded on them. I also want to save some time for, for Ashley at the end there. Um, but yeah, so another benefit of continuation practice is multiple inventions from one pack.
From one parent, um, as we talked about with divisional applications, uh, you know, if your application discloses multiple inventions, divisionals can be used to pursue each invention separately, ensuring all disclosed inventions are protected and subject to that earlier priority benefit date. And a quick, I don't know if I'm jumping the gun on that, a quick advantage to divisionals is they're not subject to terminal disclaimers.
Thank you. So we'll talk about terminal disclaimers, I guess, a little bit. But, um, terminal disclaimers, uh, tie two patents together, which can have some real consequences, but, um, divisional, since they, the [00:40:00] app, the office said these are separate inventions, uh, when you file the divisional, it, it doesn't make sense to tie them together with a terminal disclaimer and that, and it's not allowed.
Yeah, it'd be subject to double patenting. Yeah, no, that's a great, great ad. And last one here, uh, evolving inventions. Uh, as we all know, uh, very few portfolios are static. They are dynamic, um, so we can use continuations in part, uh, to allow for the addition of new matter to reflect ongoing research and development, um, while still benefiting from the original filing date for commonly disclosed subject matter.
I wanted to chime in here on CIPs more like pose a question. We mentioned before how this continuation practice in general is a fairly U. S. thing. My understanding CIPs are particularly a U. S. Practice with [00:41:00] increasingly, I feel like I've seen some numbers that increasingly U. S. inventors applications are becoming more and more P.
C. T. international applications are going out across the world. How does what is then the value? Or is there a concern for the value in a C. I. P. In a patent family that has international applications, how is that unique? Is there a concern for your international patents applications? If you have this unique US kind of only thing that's now blending subject matter of different filing dates?
Is there a particular tactic to be worried about or pitfalls to be worried about tactics to avoid that? Yeah. Well, in my opinion, go ahead, Chris. No, Kristen, go ahead. Well, so my opinion with CIPs is, is don't do them very often unless you really, really miss something in the main application, and it's important to your new product or your [00:42:00] new whatever you're working on, right?
So then absolutely do it, but don't rely on them heavily because they are not as important. As Dan said, able to be pushed around the world, right? If you have a CIP in the U. S., you can block people from making, using, selling, importing, exporting their U. S. CIP claimed invention or innovations, right? You could only do that.
So as far as the rest of the world is concerned, they can do whatever they want with your CIP contract if it's not protected in another country, if they're not dealing with the U. S., if they're not doing it in the U. S. You can still do a PCT from a CIP, but you can only protect that new matter in that PCT.
So to kind of Kristen's point, I mean, if it's, if it's a really needy PCT, CIP, right? Like you added in a whole new embodiment. One, you should be just doing a whole new application. Frankly, you shouldn't be doing a CIP, but for whatever reason, if you did a CIP, you could [00:43:00] still do a PCT one year from that.
But you can only protect the in part the new stuff that was added. The other thing, like, I think that's interesting, though, like, so let's say it's, let's say it's a weaker continuation in part. So let's say you thought it was like a really substantive improvement, but it turns out it wasn't as substantive as you thought.
There are different countries that allow for, um, Okay. Utility model filings off of the P. C. T. which is are like petty patents in places like Europe. I mean, more simply like Germany and certain countries in Europe, China. They're not everywhere, but there are a few places. So, if it ends up being a more incremental improvement.
You could do a PCT and then do a utility model, which is a 10 year unexamined patent in particular jurisdictions. That's essentially examined for validity during an infringement proceeding instead of being, uh, determined for patentability [00:44:00] during, you know, typical patent prosecution. And so, but, yes, to Kristen's point, if it's, I mean, if it's media enough, make it its own application.
So they can really have that clean path. Yeah, I see CIPs. as an exception to the rule. Go ahead. Yeah, I agree with, with both Kristen and Ashley. And then, and one different or, uh, uh, way to describe that is that with a CI, there are benefits to having CIBs because your parent is not, um, considered prior art against the, the new stuff.
So if you, if a client has a new invention that is arguably non obvious, You believe it's non obvious, but you're a little worried about what the Patent Office will say. You can file that as a new standalone application as a PCT, and as a CIP in the U. S. There's no reason not to file it as a CIP in the U.
S. It only helps you, uh, exclude your parent as prior art. So the, I have, I have seen that kind of [00:45:00] thing, um, done. It, it just, you know, You know, uh, saying the same thing Kristen and Ashley did, but if you're in that situation, you can do both. File a continuation, CIP in the US, new standalone matter internationally.
And, um, one other interesting thing I just recently came up against, which we didn't know, but our European foreign associate was very helpful with, If you're within the first year of filing, so this is pretty narrow situation, but if you have a U. S. or priority application in the U. S., you can add new matter and file it in Great Britain, for sure, and I believe other places in Europe as well, and it's the same idea.
You have a US provisional that you file and now you're going to go non provisional as a PCT. Well, you can add new matter there and you can still claim priority to the original application. So it doesn't have to be a provisional. It can be a US non provisional. It can be any application. Within the first year, you can file new matter in Europe.
Great Britain for sure. I [00:46:00] think other, other places in Europe. And not have that. Well, original application be considered prior art for obviousness, which is good to know. Yeah, I think that's called a bypass con and you can do bypass con in other countries too, but I believe when you, when you change or add new subject matter, it has to be a bypass con rather than.
A PCT filing and I would have to look it up, but there's some procedural stuff with it, but I haven't done it in a long time. Are we, are you talking about that? Are you talking about the fact? So, you know, um, so 1, so what we typically do, because we work with a lot of startups, we do like provisional. 1 year PCT, which you can add matter at that time, and then 18 months later, you do foreign countries.
Were you saying that the alternative that you were talking about, maybe I misunderstood, was more, let's say you start with a non provisional in the U. S., not provisional, non provisional, so [00:47:00] there's no provisional ahead of it, right? It's just a non provisional, and then at the end of that 1 year non provisional window, you could add more material to it in the U.
S. as a CIP, But then also fork it off as a PCT, and that's still within that one year window of the earliest date for foreign filing. You can still add new material at that time. Is that what you were saying? Basically, but instead of the, what I know for sure, because we did this recently for a client, they filed a U.
S. non provisional, no PCT, so this was the original filing, original priority date. No provisionally, yeah. Within the first year, you can file a, a, a straight Great Britain application. With new matter, claiming priority to the U. S. non provisional. Okay, so yeah, direct filings, yes. I'm not sure if you could go.
I think a PCT, probably a PCT would work as well, but that might be country by country, I don't know if, Some countries might have [00:48:00] different rules, and then you would run into a problem at national phase, I'm not sure. Yeah, that's why. So I think you can do it, but the problem is the cost. So if you're going to shoot yourself in the foot and not have, you know, the ten big countries in their PCT because they won't allow you to do that, you wouldn't do a PCT.
You'd go country by country. But I think But I would have to look that up. We'd have to. Yeah, we'd have to verify, because my understanding was You know, regardless if it's a U. S. provisional or a U. S. non provisional, whatever it is, like whatever you filed, if that's your first document in the chain, your first filing in the chain, at that one year time, you can add whatever the heck you want to it and go PCT, and all the countries are still going to respect it just as if it had been a provisional.
That's my understanding. That sounds right to me. That sounds right to me. I'm not sure. Yeah. Um, we don't do often because we work with a different, you know, clients that are a little bit more premature when they're starting that whole process. But yeah, I mean, I think at that 1 year mark, as long as it's only been a year for your form filing, you can still add as much material as [00:49:00] you want and then still go international.
And you haven't disclosed. Yes, that's true. But I think, yeah, Dave was talking about something else. Did they not want to do a PCT and they went Great Britain? Only or it was just this particular client. Yes, that is. That was the case. They went straight into Great Britain. Okay, so maybe we're talking about different things anyway.
Yeah. Yeah, it's all right. I'm not having visual, but you can see I'm like, you have this thing. Um, yeah, I think, yeah, I think, I think we all agree that the 1, so you have 1 year within 1 year to foreign file and at that, that conversion point. For that foreign fine, you can add material and that material could be continuation in part material, or it could just be.
Rolling over that application internationally. And an interesting subnote on that. You need a new [00:50:00] foreign filing license. Oh, for the new material, yes. I think so. I think so. I might have that confused because we were doing a bunch of things for them. But just a note, double check the foreign filing license requirements.
Yeah, that's true. Every time you have something new, yep. I think so, yeah. Yep. Sticky, sticky things. So, it's hard to talk about continuation process without terminal disclaimers. So, when we're filing continuation applications, we may have claims that overlap or are similar. To the claims of the parent application.
Uh, this often prompts a double patenting rejection from the USPTO. Um, so the most common way to overcome non statutory double patenting, uh, is by filing a terminal disclaimer. And a terminal disclaimer disclaims a term. of the second patent, uh, that extends beyond the term of the first, thus linking their expiration date, um, and not, [00:51:00] not unjustly extending the monopoly thereof.
The other thing that is, I think, is very important but not often appreciated is that if you file a terminal disclaimer, both of those patents are effectively joined at the hip. You may not license or sell one without the other. They are sort of the same patent at that point. They're, they're, they're sort of combined together.
Having said that, terminals claims are very common and, you know, you, if you file a broadening claim, you should expect to get one. And actually we've had a case where the um, the patent office forgot To didn't notice that and that can be a problem later. Um, this was some case law, I believe that I saw. But, um, you do if you think there should be a terminal disclaimer and the patent office doesn't issue one that also can be a problem.
Do you want to get that right? How did that come out? [00:52:00] Dave? Or what was the repercussions for? Terminal disclaimer not being filed. You know what I mean? Because like, that seems like it's a, like a catch 22, right? Because obviously you draft the claims and you feel like they're sufficiently different because you're putting them together and you're trying to kind of work it so they're different.
But then, you know, the panelist come back and says, well, I think they're too close, you know, and you're like, well, I disagree, but I'm going to do this terminal disclaimer thing because I'm not going to fight you on this. But yeah, for. Them to kind of say, well, you should have known and you should have done it.
You know, I guess what's the, I don't know if I'm familiar with that. Yeah, I can try to dig out that case law. That was a complicated case and I don't remember all of the details of how that came out. But I believe that one side was arguing that the patent should be invalid because there was no, you know, but I think what may have come out or maybe I have been a more credible argument is that.
It should have had a terminal disclaimer, therefore the, the, the term should [00:53:00] have been different than it was, um, which I think that would make more logical sense to me than just it, than it being completely invalidated, but I, you know, testing my memory of that now, I don't, I don't remember how that one was actually ruled.
So, if you have a good argument, there's no reason not to put that in the record. If you really think they're different enough. So, I had a case 1 time where the parent was directed to conversation graphs and I wrote a claim in the con directed to a social network, which is obviously a lot of conversation graphs, but it was.
a social network in the main claim. And I called it out like that. I didn't use the term conversation graph. And I argued that this is about conversation graphs in the parent. And this new one is about social network, um, fodder, right? And, and information that you use a little differently. And I had one of the elements was a different to not, I think, um, And I won.
So the examiner agreed and said, okay, no terminal [00:54:00] disclaimer required. So if you do have a good argument, it'll only take you a handful of sentences to put in there. It's just a matter of, we often do not have those arguments because, you know, the same. Four elements are identical across and then we change one thing in the end and changing an output usually isn't really non obvious, obvious, right?
Sometimes it is, but just in covering everything. So requirements file terminals claimer. It has to be filed during pendency of the application and there must be common ownership of the involved patent and application, and then I know we're running a little bit long, so I was going to do just a quick break.
Uh, wrap up on my last slide and then Ashley. If I miss anything here, you can kind of take it from there, but the proposed changes that are recently proposed to terminal disclaimers the way it stands now. [00:55:00] Each patent in a line of continuation has to be challenged separately. So when an infringer or a third party who wishes to challenge the validity Validity of claims subject to it to the terminal disclaimer must challenge each patent separately.
So to me, it's like united. They stand and divided. They fall. So if you're looking at it like a fence, you're going to have to knock out each panel of that fence to be able to. To invalidate proposed rule change to two terminal disclaimers is that a patent with the terminal disclaimer will be enforceable only if the patent is not tied to a patent in which any claim has been finally held unpatentable or invalid over prior art.
So the, the. I guess the, uh, illustration there would be, you know, a line of dominoes. If you're able to tip the first, um, you're going to knock [00:56:00] them all out. So fate and enforceability of a patent would be tied to any reference patent to which a terminal disclaimer was filed. So definitely a big shakeup.
Um, and to me, something that'd be pretty scary to, uh, to a patent owner. And I think it's bullshit because, you know, it's like, because they are, They are meant to address a separate, different thing. Like, as the drafts person, if you're doing your diligence in a portfolio, you're doing, you know, a lot of times you're, you know, doing a continuation, even if they're subject to a terminal disclaimer, you're doing it for a particular reason, right?
You didn't want a particular word. And that word might be the difference between. being invalidated in an IPR versus not. So for them to, in Ty's illustration, to knock one out and swipe out the whole of them is just ludicrous. And I know a lot of people share my sentiment on that, but it's going to go on the records.
It's harsh. It is. It is harsh. Um, [00:57:00] all right. So, if you want to go to the next slide, I'll let you keep on running here just because you're out there. Um, something you wanted to talk about too briefly is kind of the re emergence of prosecution latches. And it's the idea that, um, you might have limited ability to, um, enforce, you know, a patent if you made certain, um, did certain things during prosecution.
And so, um, prosecution latches, you know, said in another way is, you know, basically results in a valid patent being deemed unenforceable. If the patentee was found to have delayed prosecution, unreasonably and inexcusably causing prejudice to the defendant. So you're kinda looking into the history of this a little bit.
So pre 1995 there, you know, the patent term was 17 years from issuance. And so what started happening is that you'd get these, what they were calling submarine patents, where people would [00:58:00] delay prosecution for crazy amounts of time. And then when an industry has sufficiently matured to where their patent was relevant.
All of a sudden, they'd like, you know, get prosecution done, this patent would pop up and it would have a 17 year term and so it really kind of, you know, delayed industries kind of caused issues with industries that were kind of, you know, running along fine and then you'd have these patents all of a sudden emerge and nobody knew that they existed, but they had been pending in the patent office for years and so what they started doing, you know, back at that pre 1995 time was prosecution latches saying if you've, if you've been delaying, uh, For no reason, and it's causing prejudice to the, you know, the potential infringer, then, you know, we're going to say, you know, you should have.
You know, not been delaying as you have been and now you can't enforce your patent because you took unreasonable delays and you're subject to prosecution latches. Um, post 1995 when the patent term became 20 years from the [00:59:00] earliest priority date that prosecution latches really never came hasn't come into play until recently because well.
You know, they're published within 18 months. You can't really delay much and it's public domains. People can look at things and see things. And so there really shouldn't be that many surprises when a patent gets issued. And it has a 20 year term from its earliest date. This kind of re came into the. The discussion domain, though, with the Sonos v.
Google case that was recently decided. So to kind of give a quick backstory, so the original case was that Sonos, you know, speaker company, we have them all over our house, they sued Google for infringement of their patents directed to their smart speaker technology. And Sonos won, originally. A jury had found that Google infringed two of Sonos patents and awarded a verdict of 32 million.
Google then asserted prosecution latches and alleged that Sonos's patents were unenforceable under the doctrine of prosecution latches, which again, as a [01:00:00] reminder, this had not been Um, institute had not been like, applied to post 1995 patents until now. And basically they asserted that there was a 13 year delay for the time of filing of Sona's original provisional to the time of filing of the continuation application that targeted Google's technology.
And so that also included a 5 year delay after Sona's first learned of Google's technology. Um, and so ultimately the District Court in the Northern District of California, I think, um, ruled Sonos's patents unenforceable under prosecution latches because, in their opinion, there had been an unreasonable, inexcusable delay, um, of 13 years where they should have filed those claims a lot sooner.
And even though they diligently pursued continuations over that 13 year span. They basically asserted that they should have pursued those claims much sooner. Um, so kind of the, you know, effects of this, you know, right or wrong with, you know, [01:01:00] I think, you know, Sonos used continuation practice like everybody does use continuation practice.
And so maybe should they have, you know, pursued claims on Google five years sooner maybe, but maybe they didn't have the budget for it. Maybe they didn't feel like they were big enough to take on Google, which is a fair, a fair thing to be concerned about. You know, maybe they wanted to penetrate the market more before trying to take on Google.
I don't know, you know, what their internal discussions were, but I think it is an unfortunate reemergence of prosecution latches for what otherwise is to me seems like a very normal continuation pathway that Sonos pursued. Um, so, you know, is this going to be a long term problem in the patent system? Are we going to see more prosecution latches for post 99 1995 cases?
I don't know. But to the extent that your budget can. You know, handle it. You might want to consider parallel filings, you know, doing more continuations in parallel. If there are key inventions, key technologies to Davis point, you know, for maybe a really critical ones. [01:02:00] Maybe you do submit a bigger claim set up front and force the patent offices hands to do a divisional.
So you kind of have that 1 kind of sitting there. You don't have to do a terminal disclaimer. If that crap comes down the pipeline, you're protected there. And then, you know, now you have, you know, maybe a couple of divisions you can file. You might want to consider filing really key continuations within the 1st, 6 years from the earliest priority date to maybe avoid latches.
If it again becomes pervasive. If you can, you know, if you learn of a competing product and you want to potentially target that one, you might want to file that pretty quickly after learning about that product and not wait for 5 years. Um, the other interesting thing that, you know, I kind of came across is, you know, consider documenting the considerations and you're documenting all considerations that went into your continuation strategy, um, to kind of help prove that you were diligent.
It wasn't inexcusable. It wasn't. You know, the delays were there was intentional thought process that, you know, between the delays and why you did [01:03:00] the continuations like you did, um, not to say it's going to save you, but, um, and who knows, maybe a whole bunch of like noise and I actually, do we know there's been suggestions that the federal circuit is taking it up?
Do we know if that's happening yet? I think they said early summer if they did, but I haven't seen anything about it since I thought this was, you know, a good thing to include in this discussion just because it does suggest a shifting. Tied of continuations and how they might be used or some of the pitfalls, you know, I mean, you know, we kind of joke in our house between Josh and I, that not filing a continuation almost seems like malpractice.
Right? Just speak, you know, outside of the situations Kristen described, you know, there are so many benefits to doing it. You know, you just. It's a great protection strategy for clients, assuming, you know, it's not some old technology they don't need to protect anymore, but, you know, there does seem to be a shifting tide a little bit on it.
There has been, I guess, over the [01:04:00] tenure, you know, some suggestions by senators and, you know, and representatives to limit continuations, but there has been court cases that have basically said that it's only an act of Congress that can limit continuation practice. It is not. Under the USPTO's purview to limit continuations and how they're done.
So that's interesting, you know, but again, they can still do prosecution latches and things like that. They could put kinks into how continuations are without actually, um, taking away continuation practice. That is. I know y'all have thoughts. That decision seems totally wrong to me. It's just so, so very wrong and also, um, just puts a bunch of uncertainty, muddies the waters and puts a bunch of uncertainty into what's unreasonable, what's reasonable, how, how do people even know what to do, which is silly.
But here's my one sort of like, uh, Thought experiment is, you know, what, if, if, if, if this, [01:05:00] um, ruling holds, essentially what they're saying is, You know, anybody can copy anything in your patent application and, and, and, you know, as long as you don't have a claim on it yet, even if the family's alive, anyone can copy what you wrote, come out with a product, and unless you file claims to that exact thing quickly enough, well, sorry, there you go.
Prosecution latch. It was unreasonable and all these things. And I don't know, I totally agree with everything you were saying, Ashley, that like, why did they have to file it? Right when they learned of Google's product, maybe they didn't have the funds, maybe they couldn't find attorneys to take on this case.
You know, there could be tons of reasons. And it's just, yeah, it seems like a ruling that allows people to copy. Stuff from other people's applications that are families that are still alive and that they have no recourse, which just seems exactly opposite to what the patent system is for. [01:06:00] Amen, brother.
Well, I only have one comment and it's on the notes taking so all of that's discoverable. So you want to be really careful with what you're taking notes on in a continuation situation, and you do not in any way, if you are Google, or if you are Sonos, and you are saying, oh, I like these Google things. I found these.
And I think we should do a kind of that. Don't ever do that. What you want to do is say. Paragraph 92 seems to be directed to this, and I think we should do a con on that. Right? So anything discoverable, in bold red, no, anything discoverable is not, uh, also not tied back to you in a way that is painful because I mean, what if all of a sudden they say five years was too much, but also three years is too much and also one year was too much, right?
You don't know where that window will slide and who will make a different decision in the future. So just keep those comments to specification only, [01:07:00] um, discussions. I, I try very hard to keep competitors out of my notes and only look at competitive content in a way that, oh, this seems to be a competitor.
Here's their patents. Right, and not ever send an email or put something on the record that says, oh, no problem, or, oh, we're doing this and they're doing that. And we just negative things. You don't want to put those in writing. Yeah, that's fair, and I just kind of, and I'm thinking through it as I'm going.
So, Josh, you might want to edit this out later. I was just, I was trying to think so that, like, on the intro where it's talking about, like, in a previous life. You know, a firm kind of failing to illustrate the value of the continuation practice, and I was just trying to think of, like, how I would draw a simile or an illustration.
It's almost like, like, your original disclosure specification. [01:08:00] Figures is like a mining claim, but your actual claim, you know, because the misconception that we had was, oh, we put all this work into the specification and drawings like that's our patent. That's what's protected, but it's almost like you're making the mining claim.
But the actual claims themselves are where you're putting in the mine shafts and you're actually realizing what you've staked out by the mining claim. Like I said, I, it's a little bit of an immature thought. It's not mature, but I was just, I was trying to think of how I would explain it to myself. Being a non practitioner, how I would understand the difference between what you're putting in there, the original disclosure, and how you're actually realizing the value of it through the claims.
And, you know, it's hard to do that with one, say, one mineshaft, one claim set. It's one gold nugget, Ty. Your claim set's one gold nugget. That's right. And if you've got a lot of gold in that [01:09:00] mineshaft, you've got to keep on filing continuations. That's right. Yeah. Keep putting Keep putting a fence around it, right?
Each fence post is a new filing and you're going around your initial nugget. And the reason to do that is to block competitors, to protect your own ideas, and to keep your own ideas out of the hands of others. But I, I don't know. I don't, I often have clients say, well, why would I do this? Or why would I not do this?
And I usually have to explain it similar to the fence post. But also this is your technology. This is also your technology. And we don't have claims to that. Right? So anybody can come in and do what Dave's saying, right? And go and take it for themselves and. You know, get prosecution latches applied against you and once it's not pending anymore, once you allow it to become static.
Yeah. And even if you don't write, even if you file one [01:10:00] continuation and then that's it. Right. It's it's one of those things where a lot of inventions. are ripe for several different claim sets, but some inventions are not right. Some specifications are very directed, very, very, very thin for good reason, right?
We only want this, and then we're going to file something else that's similar and related, but not the same. Yeah, I like the fence analogy because the claims are your right to exclude right your your fence is excluding other people from what's in the claims. The specification is just is your right to practice.
So it does give you something. No one else can patent it out from under you. But the only thing you can exclude others from doing AKA with your fence is um what's in the claims. Yeah. That nugget. It's a hard . Protect your gold. It's a hard concept to explain because [01:11:00] it's like down the road of a future that you're not at yet.
Right? And so people are like, well, I have this patent, but what do you mean I need to have continuations? You know, for future Like what? ? Yeah, for novices, it's a very foreign. It's a very foreign thing. Um, it definitely gets them like deer in the headlights. Like, huh? And I can guarantee you. You're trying to milk me for more money.
Well, yeah, I mean, that's what I was going to say. As a practitioner, I can guarantee you I'll make a lot more money with a new innovation and a new specification than I would with a continuation. But, you know, legal costs are expensive and that's, it's always a matter of what's this going to cost me, right?
It's an expensive thing. Service, no matter what.
Well, cool. This is this is a good one. That's good information. Maybe we'll have it. Thank you both. Remove the cloud. Well, Ty did the vast majority. I just added in my [01:12:00] recency, um, fodder that we use that one a lot today. Fodder. Good word. And as always, always lean on the panel. That was good. Lots of good thoughts and.
Yeah. Both the lines we've been on, on topics too sometimes. Usually there's some differ opinions on like, you know, one 12 and stuff. But we are pretty aligned. We're all go get 'em. . I think it helps. I've been sitting here going, okay, I think I need to go to 10 slides 'cause I put too much in my slides, right?
Like, I think you need to go to fewer slides, , because you all do have, have stuff to say. Yeah, yeah, it's well, and then everything is a tentacles, right? It's not just like to the highest, but you can't talk about continuation practice without talking about terminal disclaimers. Then you can't talk about that without talking about.
Oh, well, there's been some recent case law. That might change this and turn it on its head and so it's ly Anyways, maybe we'll have to go to like a JR. One of the longer form, like the three hour podcast now. Yeah. . . [01:13:00] Yeah. With any, I gotta go pee. We do not wanna put people to sleep . No, no. Call it a nap podcast, right?
Yeah, yeah. Just pull out our radio voices and just gently soothe. Soothe? Sit in the pan of the sky. You know? Can I do this? Come? And he's sad. Yeah. That was when we found the birds were dirty. Sorry. Patton burst in torn. ASMR Patton.
Okay. Josh, we've got a new content for you. You can add that all out. I have a friend of mine was listening to the podcast and she stated that she really enjoyed the sections where we as a bunch of experts just started talking about irrelevant things. She's like, this is so interesting to hear these [01:14:00] highly trained skilled people.
Then just like. Devolve, yeah, all right. Oh, cool. And thank you. Thanks, everybody. Thanks. Have a good week. Yeah, you too. Bye. All right. That's all for today, folks. Thanks for listening. And remember to check us out at aurorapatents. com for more great podcasts, blogs, and videos covering all things patent strategy.
And if you're an agent or attorney and would like to be part of the discussion or an inventor with a topic you'd like to hear discussed, Email us aurorapatents. com. Do remember that this podcast does not constitute legal advice, and until next time, keep calm and patent on.
