The Scope of Patent Protection

The scope of protection of an issued United States patent is defined by claims. In other words, claims of an issued patent define the metes and bounds of protection sought, and must delineate subject matter that distinguishes over prior art to be valid. Claims of an issued US patent must meet certain statutory requirements for disclosure of the subject matter set forth in the claims. That is, subject matter of an invention set forth in valid U.S. patent claims must be described in and/or illustrated by the specification and drawings submitted on a filing date of a patent application. 

Filing Process

Once a patent application is filed in the United States Patent and Trademark Office (USPTO), prosecution of the patent application may commence after an examiner reviews the patent application papers and mails an office action to the applicant.  An Office Action typically points out to the applicant issues that are to be resolved before a patent may issue. These issues typically include positions by the USPTO that one or more of the claims presented in the patent application do not distinguish over the prior art of record. The applicant then has an opportunity to respond to these issues by, for example, amending claims and/or arguing to distinguish the claims over the prior art of record. If the examiner is convinced that issues raised in the Office Action had been resolved, such as amended claims distinguishing over the prior art of record, a patent may issue.

Patent Claims

Before a patent application issues as a U.S. patent, the patent applicant has an opportunity to seek additional patent claims beyond claims that are to issue in the patent. This may be accomplished through filing of one or more  divisional or continuation patent applications claiming priority to the earlier filed parent patent application. Like claims in the parent patent application, claims in a divisional or continuation patent application must be supported by the specification and drawings submitted in the filing of the parent patent application. In other words, new claims introduced in a continuation or division of patent application must not introduce new matter that was not disclosed in the specification and drawings of the initial filing of the parent patent application.

Currently there are no limits to the number of continuation and/or divisional patent applications that may be filed claiming priority to the same parent U.S. patent application. Also, priority in a continuation and/or divisional patent application may be claimed serially in that, for example, a second continuation application may be filed claiming priority to an original issued parent patent application provided that a first continuation application is still pending.  

This process of filing divisional or continuation patent applications allows the applicant to claim the invention from different perspectives, perhaps from the perspective of a server in one set of claims and a handset in the other set of claims.  It also permits the applicant to develop a small ‘thicket” of claims in different patents arising out of the original specification, making it more difficult for a competitor to design around the claimed invention.  There are numerous other strategies for filing divisional and continuations claims. 

Patent Filing Challenges

If a patent applicant fails to file a continuation or divisional patent application before the issuance of a patent, the patent holder may still pursue additional claims in a broadening reissue application provided that the broadening reissue application is filed within two years of the issuance of the patent.  Such a broadening reissue application must include a declaration from the patent owner (or a related party) expressing a belief that broader claims could have been obtained in prosecution of the original patent. Click to learn more about Patent Services.

Patent owners contemplating filing an application for broadening reissue should be aware, however, that filing such an application with the USPTO reopens prosecution for the application that resulted in the original issued patent, and that there is a risk of an adverse outcome.  For example, in examination of the application for broadening reissue, the USPTO could rule that claims issuing in the original patent are not patentable.  This situation may arise, for example, if a different examiner uncovers other prior art or reaches a different conclusion on the same prior art than was reached in prosecution of the original patent. Thus, a broadening reissue may be an opportunity, but with some significant risk as well.

If you are interested in learning more about the patent process or you would like us to help you “mine” additional claims from your current patent application specification, please contact me at 503-439-6500 or pnagy@bltg-ip.com.