Patently Strategic Podcast: Continuation Practice

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. Challenges may come in the form of litigation or IPRs, as we discussed in our last episode of Patently Strategic. 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. And you get to do so without losing the benefit of the original filing date, which is crucial!

Creating More Robust and Valuable Patent Families

?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 things a lot on this podcast in terms of doing kind by future self, but continuations are the closest equivalent of past self grabbing a lifeline to toss out to future self in a time of need!

Episode Overview: Quality Patents Part 3

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 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. This episode builds nicely on the excellent foundation laid down by Kristen Hansen in the series kickoff on crafting quality patents and in the follow-up PTAB Survival Guide hosted by Matt Phillips.

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
• The potential unfortunate consequences of the recent Sonos v. Google decision regarding a very common use of continuation practice
  

Discussion Panel

 Ashley and Ty are joined today by our always exceptional group of IP experts, including:

• David Jackrel, President of Jackrel Consulting
• Kristen Hansen, Patent Strategy Specialist at Aurora
• Daniel Wright for his re-debut on the podcast, returning this summer to Aurora as a Patent Strategist

Mossoff Minute: RESTORE Act

In this month’s Mossoff Minute, Professor Adam Mossoff 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. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.

For the benefit of an audience that’s generally more plugged in to happenings in the patent world, we’re also including an extended cut of the conversation on our YouTube channel, beyond what we’re distributing as a short because we hope it will help to shine a light on some of the confusion and controversy within the patent community surrounding what the bill is and what it will accomplish if passed.

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.

Related Listening and Reading

To further explore the topics discussed, see the following past episodes and resources:

• Crafting Quality Patents. Part One in our patent quality series, focused especially on drafting.
• PTAB Survival Guide. Part Two in our patent quality series, focused on making your patents more resilient to IPR challenges at the Patent Trial and Appeal Board.
• Patent Wars: Innovators, Revolutionaries, and the Race to Reform. A deep dive into the problems plaguing the patent world. Topics include eligibility, enablement, injunctions, and the patent troll myth.
• Patent Anatomy: What’s in a patent? Deep dive guide into the parts of a patent and how they connect.
• Patent Claims: The Name of the Game. Part one of our claims series, discussing the basics of claims and claim strategies.
• Restoring Injunctive Relief. Recent injunctions-related studies, details on the RESTORE Act, and video commentary on the injunctions problem and how RESTORE addresses it.