Advice for Every Inventor Thinking about Filing for a Patent

Among all asset classes, patents are unique because they are the one asset that you cannot buy and then modify to your exact needs. Take real estate, another asset class, as an example. You can buy a building that once housed a factory and turn it into a warehouse – or vice versa. Or…you can apply for a zoning variance and turn that old factory into an office building. Or even an apartment house. Even a nursing home or extended care facility. You could knock out big chucks of the front wall of the building, put in windows, and turn that old factory into a retail location – a store or restaurant. The possibilities are almost endless. It is increasingly fashionable these days to buy a barn and turn it into a house. Or buy a warehouse or factory building and turn it into lofts. You get the idea.

Alas, the same is not true of patents. The red meat of a patent is its claims. And what is in the claims in the granted patent is what a business receives when it buys or licenses that patent. Wouldn’t it be great if a business could buy a patent, and then tweak the invention covered by that patent to the exact needs of that company? Alas, to dream, but it is not possible.

But wait a minute. There actually is a way to do that! It is called a continuation. When a patent application is approved – the Patent Office term is “allowed” – that is time for the inventor and his or her patent attorney to file for a continuation. There are continuations, divisionals, and continuations-in-part, and your patent attorney can describe the differences between them and which is most appropriate to your patent.

At the point when you record a continuation, you make a patent application that incorporates the cases from the main patent alongside the Need Date of the principal patent. When you go to market with a granted patent and a continuation patent application based on that patent, you create a portfolio that is a much more attractive and valuable asset than just the initial granted patent.

What the acquirer of the patent-and-continuation can do is use the continuation to tweak the invention in the original patent. For example, a patent covering a medical device for humans can be supplemented by a patent that covers animals. A patent that includes a visual and audio warning device can be supplemented with a second patent that calls a specified phone number or communicates via Bluetooth. A patent covering industrial equipment can be supplemented by a second patent that covers household appliances. The possibilities are quite literally endless!



Here is the other benefit of filing a continuation. One morning you are going to wake up at 3:00 am and ask yourself why you did not include one more feature in your recently granted patent? But wait, you can. Use the continuation to add that feature. Now you have an even more comprehensive patented invention.

But – before that second patent is granted – be sure to do what? File for a continuation!

What if you and the buyer of your patent never need the continuation? You just let it lapse. No harm. No foul. We are believers in High Reward/Low Risk ventures, and filing for a continuation before your next patent issues is clearly High Reward and Low Risk (and low cost). It creates a portfolio that is more appealing and more valuable than just the solo granted patent.

While this advice has been given from the aspect of the independent inventor, it clearly applies to any organization – such as a business or university – that is filing a patent for an invention. Filing a continuation gives the organization the ability to build on the basic invention covered in the initial patent and create a downstream – or several downstream – second or third-generation patents that share the Priority Data – always a critical factor – from the initial patent.

As soon as your patent application is published, it is time to go to market with your patent. It is not necessary to wait until the U.S. Patent and Trademark Office has actually granted the patent. Find a patent broker that can put together a comprehensive patent marketing program knows how to sell patents. Far too many patents for sale end up with incompetent brokers and never actually get sold!