‘Open Prosecution’ or ‘Continuation Practice?’

Alec Schibanoff, a Vice President of IPOfferings LLC, wrote a post for IPWatchdog titled “Open Prosecution as a Strategy to Counter IPRs Filed by Defendants.” The post advises “to always file for a Continuation for each and every patent application they have in prosecution before the patent is issued.” That way, when the original patent is asserted and then challenged via IPR, the patent owner “could file for an additional patent with new Claims but the same Priority Date as the original patent, and add it to the lawsuit.” The post says the downside is only “if you file[] for a Continuation, but never use[] it.”

Most of my patent colleagues have called this the primary form of “continuation practice” and I believe it’s pretty standard for patents with well-written specifications. Another downside is the shortened life of the continuation claims after the Examiner leverages a “non-statutory double patenting” rejection. A straight “continuation application” is not a mechanism to extend the patent term and, while the practice may seem sneaky–especially considering the proposed use as an IPR defense/deterrent– it’s not inexpensive.

Today, the USPTO often appears to incentivize examiners to deter/slow continuation practice down by reviewing claims and issuing Office Actions for continuations quicker. The quicker an applicant gets to a Final Office Action (or Allowance), the quicker the applicant will have to pay for another RCE or to file new continuation claims. The patent agent can draft broader claims and/or file extensions of time in attempt to slow the prosecution, but money must be spent to keep it alive.

My bottom line is that while the practice may be smart for applicants hoping to license/sell their patents to entities willing to assert, the downside is that the proposition (if done right) will cost thousands and not merely a few hundred dollars.

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