HOW TO UTILIZE PATENT FAMILIES TO REDUCE PATENT COSTS

Companies can use patent families to reduce costs associated with obtaining patents, increase the number of patents obtained and increase the claimed scope of patent protection. A patent family is a set of patents that utilize the same disclosure of a patent and have the same priority date.

Patent attorney’s file most original patent applications for applicants, such as a corporation, start-up, or solo inventors, which the original patent application establishes its own filing date and does not have an effective filing date based upon any other previously filed patent application. This original patent application will become known as a “parent” application in the patent family.

Subsequently, the patent attorney on behalf of the applicant may file continuation patent applications, which utilize the parent application’s disclosure and claim the benefit of the parent application’s priority date. These subsequently filed patent applications are known as “child” applications.

The patent attorney on behalf of the applicant must file child applications when at least one patent in the family is pending. The child application must share at least one inventor with the pending parent application and include claims that are fully supported by the parent application.

During standard prosecution of a patent, the patent attorney on behalf of the applicant files the patent application. Subsequently, an examiner at the U.S. Patent and Trademark Office reviews the patent application and issue what’s called an office action.

Typically, the first office action issued will reject all the claims and require clarifying amendments to overcome the rejections. Normally, a patent application will receive between two and five office actions to secure patent with sufficiently broad claims.

However, each office action requires a patent attorney to do six things: 1. review the examiner’s rejections, 2. review the references associated with the rejections, 3. determine differences between the references and the invention, 4. draft clarifying amendments to the claims that are not too narrowing, 5. draft arguments about why the claim amendments are different from the prior art, and 6. file the amendments.

This process can take a patent attorney eight to 15 hours for each office action, based on the complexity of the invention and the number of references cited. Legal costs rise quickly when the company must repeat this process several times.

One benefit of using a patent family is that it can reduce substantially the number of office actions issued with a parent patent application. If a company knows that it will file child patent applications, the company can file the parent patent application with narrow claims.

What’s the benefit of filling a parent application with narrow claims? Doing so requires the examiner to find the best possible references for the first office action he issues, effectively showing his hand. The granted narrow claims may afford the company at least some patent protection while substantially lowering the number of office actions required.

That’s not all. The narrow claims in the parent application also may allow a company to cover the functionality of a specific product without design-arounds in mind. Additionally, by filing a parent application with narrow claims, the examiner may divulge what claim areas he or she believes are patentable without issuing an office action.

 Helping the Child

After receiving this knowledge, the patent lawyer subsequently may file child patent applications involving broader patent claims with the USPTO. The patent lawyer can draft the claims in the child patent applications around references the examiner cites during his or her initial search for the parent patent application. Furthermore, the patent attorney can file additional child patent applications with claims that cover an additional or different claim scope than the claims within the filed parent application or other child applications.

Another benefit is flexibility. By maintaining a pending application in a patent family, the company later may file child applications with claim scopes that the patent attorney can change.

For instance, if a competitor creates a product to design around the company’s granted patent, a child application may include claims that cover designs-arounds. Therefore, the company can use child applications to cover competitors’ designs that were not implemented at the time of filing, as long as the pending application in the family includes support for such amendments.

After filing a parent application with narrow claims, the number of office actions issued and corresponding attorney fees drop drastically reduced. This may lead to the addition of more patents to a portfolio, a broader claim score associated with the patent family, and a reduction in the attorney fees and USPTO fees associated with obtaining the patents.

Nonetheless, some disadvantages to filing patents in families should concern in-house lawyers. A patent term is 20 years from the filing date of the earliest filed parent application in a patent family. Thus, filing a child application has the potential to drastically reduce the enforcement life of the child application.

There also are costs associated with maintaining each individual patent after the PTO issues it. Yet, if one member of the patent family includes claims that protect intellectual property with relatively little value, the company may decide to let this patent go abandoned as a sunk cost.

Filing patent families is all about formulating a strategy that a company’s in-house attorney and the company’s patent attorney should develop. This strategy should include what is the most important claims scope the company is trying to protect, and which claim sets should be looked at for protection with subsequent child applications.

By | 2014-07-05T20:17:13+00:00 July 5th, 2014|Blog|Comments Off on HOW TO UTILIZE PATENT FAMILIES TO REDUCE PATENT COSTS