Originally posted on the Tinker’s Guild Tech Forum

"Expanding" Patents FAQ
by Hopalong

To add to Doc's FAQ, I'm going to post one of my own that focuses more on the patenting process in general in the US.

How can someone expand a Patent?

There are things in the patent world known as Continuations and Continuations-in-Part (CiPs). They both use a previously filed patent application that is still pending to get a better priority date. This previously filed case is called the parent, and the continuations and CiPs are called children.

How do Continuations work?

A continuation is typically filed when the inventor wants to further define the material in the parent case. The continuation cannot add new material to the patent.

Continuations are often filed when the parent is too broad to get a patent, but does contain to a patentable invention. The continuation further defines the inventions in order to get allowed. There are other "uses" for continuations, but this is the main one. The other benefit is that anything disclosed in the interim does not count as prior art because the continuation has an effective filing date that is the same as the parent.

How do Continuations-in-Part work?

Just like continuations, except that new material is added. The CiP gets priority just like a continuation, but not on the new material. This is a very important distinction: even though the effective filing date on the patent may be one date, the effective filing date on any newly added material has a later filing date.

Are there any other ways?

Yes. Divisions, Re-Exams, and Re-Issues. However, I don't think that they are relevant for the current issue (and I don't know enough about them to pontificate accurately)

How can SP take advantage of this system?

SP files a patent in '96. The original patent never issues, but they file continuations and/or CiPs on the parent. In the mean-time, they build their markers and allow others to do the same. At the time, nobody else realizes that they're infringing on a patent because until recently, pending applications were confidential (this is no longer the case). So, they continue this process for a while until a big enough market exists, and then they finally allow one of their patents to issue. Now, they have a whole market that is infringing on their patents that they can sue. Sneaky, no?

What can be done to stop them?

Depends. If the "expansion" to their patent was added in a CiP, then the effective date for those parts of the invention is later than the filing date for the parent, and SP has no case. In fact, if this comes out in the suit, it could invalidate parts of SP's patents. (Wouldn't that be ironic)

If the "expansion" to their patent is a new court intrepretation, not much shy of invalidating SPs patents. The courts have the deciding factor as to the intrepration of a patent despite the fact that they are supposed to be as clean-cut as possible.

In a way, broadening their patent may work against them. The best way to stop SP would be to invalidate their patent. Now that their patent is apparently much more broad, it should be easier to find prior art. If this prior art were to come out in court, it could tip the balance.

Enjoy.

Posted on Jul 23, 2003, 6:08 AM