Continuation Application For Broder Claims?

[listenup77]

California. How effect is it to file a continuation appl., for the sole purpose of pursuing the broader claims the PTO first rejected? Example: I file a patent appl. and the PTO rejects one claim. In order to expedite some decent protection for my product/idea, I decide to not argue the rejection and except the narrower claim. After getting the patent, I file a continuation to that patent, pursuing the broader claim; now I have less of a hurry and time to argue for a broader claim. Can this strategy work? And would Festo/estoppel be an issue, even if I'm granted my broader claims (abandoned in the first application, but granted in the second)? Thanks.

 

[divgradcurl]

California. How effect is it to file a continuation appl., for the sole purpose of pursuing the broader claims the PTO first rejected? Example: I file a patent appl. and the PTO rejects one claim. In order to expedite some decent protection for my product/idea, I decide to not argue the rejection and except the narrower claim. After getting the patent, I file a continuation to that patent, pursuing the broader claim; now I have less of a hurry and time to argue for a broader claim. Can this strategy work? And would Festo/estoppel be an issue, even if I'm granted my broader claims (abandoned in the first application, but granted in the second)? Thanks.

I'm not really sure how this would work, unless the continuation is really a continuation-in-part and you add new material to get around the claim rejections. Here's why -- if you narrow your claims to avoid rejection, you can't later reclaim that material you gave up in a continuation, because all of the estoppel issues that will limit "recapture" of material in the parent application will also limit any "child" applications. In other words, if you give up material in the parent, that same material is automatically "given up" in the child applications as well. Any limitations in ANY application in a family of applications covers EVERY application in that family.

Besides, if you COULD traverse the rejections, why wouldn't you just do it in the original application and save yourself the hassle of later estoppel issues, and the cost of another application? If you need to add new material to the specification to get broader protections, fine, then you file a continuation-in-part, add the new material, and hope that the new material avoids any estoppel arguments from the parent application. But if all you are doing is trying to get the patent issued faster, well, you are likely shooting yourself in the foot.

Another possibility, if you don't want to go the CIP route, is to wait for the patent to issue, then file for a reissue -- sometimes, during the reissue, a clever patent practitioner can recapture some or all of the ground lost during prosecution -- but you have to go with someone top-notch, because reissue applications are tricky, and its easy to screw yourself out of good claims trying to get broader protections.

So, in summary -- if you have any possibility of traversing the claim rejections without adding new material to the spec, do it now, or wait for reissue -- don't count on a continuation. If you need new materials added to the spec to traverse, file a CIP.

 

[listenup77]

Thanks for your advice, I agree with what you wrote. This strategy was written in a book I'm reading and wondered what the opinion was like.

 

[divgradcurl]

Thanks for your advice, I agree with what you wrote. This strategy was written in a book I'm reading and wondered what the opinion was like.

Well, the book may not actually be wrong if they suggest that strategy -- it might get by the patent office and result in issued patents, but any patents issued in this way will get destroyed in litigation. I admit that I am biased -- I do have a USPTO registration number, and I do draft and prosecute patents, but my main gig is patent litigation, so I tend to view patents (and tend to draft and prosecute patents) with an eye towards what might happen if they ever end up in litigation. So, that strategy you propose might indeed result in some issued patents, and that might be good enough for your own purposes -- but such patents would likely get pretty beat up if they ever ended up in a courtroom battle.

 

[divgradcurl]

One other thing -- I may have misread the original post. Were you describing a scenario where you have an application with, say, three claims, and you get an office action rejecting the broadest claim (claim 1, for example) and allowing 2 and 3, you respond by cancelling claim 1 and moving on the allowance with 2 and 3? In that case, if you cancel without prejudice, you can file a continuation and try and recapture claim 1. However, as I noted earlier, any limitations that you introduce trying to traverse a rejection will be applied to all of the patents in a given family; further, if you cancel a claim that has been rejected in an office action, then later file a divisional or continuation where you present the original claim 1 without modification, the original rejection will still be in place, and you will have to try and traverse the rejection in the continuation.

This is why I didn't really understand the point of this -- it's not like you can ever get away from the idea of trying to traverse the rejections if you want to obtain broader protections -- you will still have to traverse the rejection eventually, and if you make any limiting statements in a daughter application, those limits can also be applied to the parent application, so you really haven't saved anything.

And from a litigation standpoint, its a lot better to try and do it the right way the first time, and keep the prosecution record as clean as possible.

 

[listenup77]

I agree, get it right the first time. Also, about the writing patents with how it will stand through litigation; I think it's the best way to go about writing a patent. I read somewhere, in a book, that the only real protection you have with a patent are the rights you win in court. When you really think about, it proves to be so true. Thanks.