Before Your Patent Issues, File a Continuation!

In the prior post, Converting a Provisional to a Non-Provisional Application to Obtain Your First Issued Patent, I provided an overview of the process of converting a provisional to a non-provisional application up to the point of issuance.

One important thing that a lot of inventors/patent owners are never told about (or do not remember being told about) is that they should also file a continuation before the issuance of the patent.  This must be done before the issuance of the prior patent.

Given that the first application only covers what is specifically called out in the Claims, a continuation should be filed before the issuance of the patent to protect additional material not encompassed by the first set of Claims. 

A continuation is essentially a copy of the non-provisional application, that claims the benefit of the provisional and prior non-provisional applications.  The continuation also contains new patent Claims.  The continuation allows an inventor to continue to claim other inventions in the disclosure with the filing date of the original provisional application.  For example, if an inventor files a provisional in 2019 and maintains continuity by always filing a continuation before the issuance of a patent application, in 2029 the inventor can file another patent application with the original 2019 filing date, and draft the claims of the application based on what your competitors are doing (so long as the information was disclosed in the original provisional / non-provisional application).  This can be incredibly powerful—it’s almost like having a time machine that enables you to write claims based on your specification after looking into the future to see how the patent will be  infringed.  Given that it’s a copy of the original application, the preparation fees are minimal but another set of filing fees are required for the continuation.

Also, it is important not to forget every issued utility patent needs to have maintenance fees paid at 3.5, 7.5, and 11.5 years after the issuance to continue to remain in force.  These are currently $800, $1800, and $3700.  This is a cost that is not immediate on the issuance of a patent, but it is something that can add up over time particularly once several continuations have been allowed and issued.

While the above is focused on utility applications, the importance of filing continuations also applies to design patent applications as previously discussed in Starting The Patent Process with a Comprehensive Design Patent Application and the referenced series of articles titled "Strong Design Patents."  There are no maintenance fees required for issued design patent applications.