Have You Checked Your Pending Patent Applications Lately?
When is the last time you took a look at the claims of your patent applications that are still pending? Was it when you filed the applications? How long ago was that? If you are waiting for a first office action from the U.S. Patent & Trademark Office, it may have been over two years since you filed your applications.
The problem is that while your applications have been sitting in the Patent Office queue, your technology has continued to evolve. You may have made improvements or refinements to the technology. However, it is important to check your pending applications and see how well they cover the technology now. In some cases, we have seen clients who no longer even practice the claims of their pending applications. That may be alright if your main goal is licensing or if you want to build a blocking patent estate around your technology area in general. However, many clients want patents to keep competitors from copying their particular products, and if you have modified your design, formulation, etc. you may find that the claims you are pursuing no longer protect your commercial products. For example, if your independent claims require four elements and you have now omitted one of them, they will not cover your product.
For this reason, it can be critical to review your portfolio of applications from time to time and assess their relevance to your current activities. Otherwise, you may find yourself spending money on patents that are not commercially valuable or which are no longer relevant to your business.
A corollary to this admonition is that when one of your applications issues as a patent you should consider whether to file a continuation application. This is especially important if the application has a number of different embodiments that would allow you to go after claims with different points of novelty and having different scope. As the marketplace evolves, you may find that an application that you filed several years ago will support blocking claims that you can use to thwart your competitors. So, when you are getting ready to pay that issue fee for your patent application, give some thought to how the application relates to changes in the market that occurred after it was filed.