4 STRATEGIES TO STRENGTHEN AN EXISTING PATENT PORTFOLIO

Last month, we published a blog post on the basics of launching a successful patent portfolio.

That post was geared toward tech companies in the initial stages of building a patent program. Since then, we’ve fielded inquiries from readers who want to know: What if we’ve alreadylaunched a patent portfolio? What steps can we take to make our existing patent portfolio more effective?

A strong patent portfolio requires a considerable investment of time and money — and as a startup owner with limited resources, it’s especially important to ensure your patent portfolio consistently gives your company a strong business advantage.

In this post, we’ll look at four common strategies to strengthen an existing patent portfolio.

1. STRATEGIC USE OF CONTINUATION APPLICATIONS

A “continuation” application enables you to pursue additional claims based on an earlier-filed patent application (called the “parent” application) that hasn’t been issued or abandoned yet. Continuation applications use the same priority dates and specifications as their parent applications.

Continuations are often used simply to preserve the “pendency” of an application. As long as you have a continuation pending, you can file claims for any of the subject matter described in the original application — even for ideas that were not initially claimed.

(By contrast, if a continuation isn’t filed before the parent application becomes issued or abandoned, the ability to file new claims is extremely limited.)

A continuation application may offer you the flexibility to pursue additional claims tailored to your business objectives, such as:

• Directing your claims to a specific competitor or field of use
• Drafting narrower claims that avoid newly-discovered prior art
• Pursuing broader claims that provide more comprehensive coverage

USING CONTINUATIONS OFFENSIVELY

You can use continuations to deter competition.

For example, if a competitor tries to enter the market with a similar product to yours, you can file additional claims directed at their attempts to “design around” your existing patent. Keep in mind, though, that any additional claims you introduce must be adequately supported by the specification of your original application.

Another example: You can use continuation applications to create uncertainty around the eventual scope of your patent portfolio. By introducing broader claims that cover multiple embodiments of your invention, you force your competitors to contend with an increased risk of infringing your patent rights.

USING CONTINUATIONS DEFENSIVELY

If you think your patent might be challenged in court or hit by an IPR, you can use a continuation to introduce additional claims that will withstand challenges based on newly discovered prior art.

In addition to providing some salvageable rights, the continuation may discourage an IPR in the first place by introducing a moving (and more costly) target for the challenger.

USING CONTINUATIONS TO PURSUE BROADER CLAIMS

Continuations are often filed to pursue broader claims after narrower claims have been allowed in the initial patent application.

As one example, an examiner might indicate that one or more of your (narrower) dependent claims is allowable, while rejecting the (broader) independent claims. In that case, you may choose to accept the narrower claims just to secure an issued patent, and simultaneously file a continuation application to pursue the broader claims.

As another example, you may have initially filed narrower claims in order to obtain an issued patent quickly — perhaps because you need to attract funding from investors, or gain immediate protection for a particular embodiment of your invention. Consequently, you can use continuations to obtain broader protection later on.

2. STRATEGIC USE OF REISSUE APPLICATIONS

A “reissue” application can be filed to correct a mistake in an issued patent. Some of the errors that can be corrected by filing a reissue application include:

• Correcting inventorship
• Correcting substantive errors in the drawings or specification
• Broadening or narrowing the claims
• Citing references that should have been cited in the original application

Reissue applications may be filed by only the owner of the original application, and cannot introduce any new subject matter to the original application.

HOW ARE REISSUE APPLICATIONS DIFFERENT FROM CONTINUATION APPLICATIONS?

Reissue applications offer many of the same opportunities that we listed above for continuation applications (such as pursuing a broader, narrower, or different claim scope) — but with a couple of significant downsides.

The main risk of filing a reissue application is that the claims of your original patent will need to survive another full examination process. That’s because when the reissued patent is granted, you have to surrender the original patent — including any claims that don’t survive.

(By contrast, you can pursue a continuation application without jeopardizing the claims of its parent application. Thus, continuation applications are the strongly preferred mechanism for pursuing claims of different scope.)

The other risk is that you have to formally state that the original patent is defective. If a reissue patent isn’t granted, this admission can jeopardize the original patent’s viability.

However, reissue applications are often valuable because they can be used to do things that continuation applications can’t: namely, correct errors in an issued patent.

REQUESTING A BROADENING REISSUE

A broadening reissue is a request to enlarge the scope of the original patent’s claims. So it’s used to address cases where you’ve obtained overly narrow claims — that is, claiming less than you were entitled to claim in the original patent.

But there’s a very important time restriction on this: broadening reissues must be filed within two years of the original patent’s issue date.

REQUESTING A NARROWING REISSUE

Conversely, a narrowing reissue modifies claims that inadvertently cover too much subject matter, such as something that’s already known in the prior art. This can be used to cure claims in an issued patent that would be invalid, for example, for being obvious in view of the prior art.

Narrowing reissues may also be applied for at any time, assuming the original patent is still in force.

3. APPROACH YOUR PATENT STRATEGY FROM A NEW ANGLE

Many companies typically consider seeking patent protection for only their own commercially viable products — but there are many other ways patents can give your business a competitive edge.

THINK BIGGER

First of all, think about patenting a broader range of technology. In particular, you can seek patent protection for more than just your end product.

As an example, your competitor may produce a totally different product from you, but you can put competitive pressure on them by patenting technology relevant to what they do — even if it’s not what you do.

LOOK CLOSER

Next, think about the technological ecosystem around your product. For example, think about the manufacturing and shipping of your product, or how your product interacts with other technologies. Are there key technical components in your product that will be essential to compete in certain markets?

Even if the chances of getting broad patent protection for your invention are low, sometimes it’s worth pursuing a patent for specific components and features that could become ubiquitous in the market. 

GET OTHER TEAM MEMBERS INVOLVED

Finally, use all the strategic minds that you have available on your team — including the non-technical, business-minded people. Although your patent portfolio is typically the domain of R&D folks and patent professionals, periodically getting other viewpoints involved can be extremely valuable.

4. STRATEGICALLY PURSUE FOREIGN PROTECTION

If your technology is relevant to a foreign market or if you have competitors operating in foreign countries, pursuing foreign patent protection ensures that your company is exploring all viable options in your overall patent strategy.

When determining where you should foreign file, consider the following factors:

• Where are your competitors filing patent applications?
• Where are your potential investors doing business?
• Where do you want to sell/manufacture/distribute your product?
• Where do your competitors want to sell/manufacture/distribute their product?

We’ve also written a more comprehensive guide to the basics of building an effective global strategy — be sure to check it out.

ARE YOU FINANCIALLY PREPARED TO STRENGTHEN YOUR PATENT PORTFOLIO?

Maintaining a competitive patent portfolio requires a lot of forward planning. You need to make best use of your limited resources so as to maximize your return on investment.

To help you make the necessary financial preparations, we’ve put together a free infographic that estimates the costs you’ll incur at every step of the patent process. Download it now!