The majority of profitable inventors generate most of their revenue from only a single patent, or at most a small handful of patents. Once an inventor has achieved this challenging feat—actually making money from their work—it can be tempting to feel as if they are ‘set for life,’ or at least for the life of the patent.
But this is a potentially dangerous belief that can lead to a business’s downfall.
If you would like an experienced patent lawyer to review your existing patents and pending applications and identify any potential legal vulnerabilities that could undermine your livelihood, the Law Office of Michael O’Brien can help. For assistance, call us at (916) 760-8265, or send us a message using our site’s contact form.
But what are the risks of relying on a single patent or small collection of patents? There are two key reasons for concern.
First, patent laws change, and how they are interpreted changes. Once profitable patents can be rendered invalid by the stroke of a judge’s pen.
Patent law, like any field of law, is subject to the whims of legislators. But how existing patent law is enforced and interpreted can change radically due to shifts in how judges interpret the legal code.
For instance, in the last decade new case law precedents have had a significant impact on how Title 35, Section 101 of the U.S. Code is interpreted. Section 101 is one of the most crucial pieces of patent law in existence, as it broadly defines what is patentable, essentially acting as a gatekeeper to patentability.
Senator Chris Coons of Delaware summed up the potential consequences of judicial reinterpretation of Section 101 thusly in a 2016 keynote address:
Over the last eight years, however, a series of Supreme Court decisions on Section 101 have substantially moved the line on what is patent-eligible. These rulings have created uncertainty about the validity of previously issued patents… [and] courts are calling into question whether patents should be granted at all to inventions made in critical areas of our innovation economy… The manner in which case law has been developing is creating profound uncertainty on what is and what is not patentable.
An inventor who pins his or her profitability on a single patent, or a small clutch of interrelated patents, may see their business model toppled through no fault of their own, but instead through a court’s newly expressed viewpoint on the patentability of entire categories of inventions.
Secondly, potential infringers who see a profitable opportunity are pretty clever at sidestepping patents.
If you take five minutes, you can find innumerable lengthy, well-written guides on how to “design around” patent claims and avoid infringement. A highly motivated infringer who does the necessary due diligence has a good chance of finding an effective way of circumventing your parent, and marketing a product which might infringe your patent in spirit, but not in letter.
Without a strategy in place for countering such attempts to skirt your patents, you may see your market share significantly diminished by your infringer and their imitators.
Continuation patent applications are a means for patent holders to expand the scope of their patents and improve their enforceability.
Since the 1830s, the Patent Office has allowed inventors to patent improvements on their previously granted patents. Originally known as “additional improvement patents,” the USPTO now offers a variety of options for expanding the scope of existing patents and patent applications.
One of the most critical such tools the USPTO offers is the ‘continuation application.’ Continuation patent applications allow an inventor to append additional claims to an invention described in a previously submitted, but not yet granted, application.
Continuation applications are a tool often utilized by large firms who understand their industry well enough to know that competitors will aggressively look for ways to design around newly issued patent claims. Such firms will apply for a patent, and then shortly thereafter submit a continuation application with additional claims, and then allow the continuation to remain pending for a long period of time.
In such cases, the goal of the continuation application is to create a sort of “fog of war” around the claims in the original application. As long as the continuation is pending, would-be infringers have no way of knowing the full scope of the claims, and thus how to avoid infringement. If a competitor decides to chance it by marketing a similar product, the patent application filer may be able to revise the claims in the continuation application to cover the competitor’s approach, and then sue them for infringement.
Continuation applications can be incredibly effective anti-infringement tools, when wielded by a skilled patent lawyer. If you would like assistance with developing a strategy for protecting your pending patents against competitors, the Law Office of Michael O’Brien can help. For more information, contact us today by calling (916) 760-8265, or sending us a message using our site’s contact form.