Continuation Practice: Quality Patents Part 3

​​Patently Strategic - Patent Strategy for Startups

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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
⦿ Patent Wars: https://www.aurorapatents.com/blog/patent-wars-innovators-revolutionaries-and-the-race-to-reform
⦿ RESTORE Act: https://www.aurorapatents.com/blog/restoring-injunctive-relief

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Chapters

1. Intro (00:00:00)

2. Mossoff Minute: RESTORE Act (00:04:06)

3. Continuation practice overview (00:08:14)

4. What is continuation practice? (00:08:42)

5. When can continuations be filed? (00:11:42)

6. Types of continuation applications (00:13:11)

7. Benefits of continuations (00:16:31)

8. Terminal disclaimers (00:50:19)

9. Prosecution latches (00:57:00)

10. Sonos Inc v. Google LLC (00:59:20)

11. Outro (01:14:18)