Knowing the Strategy: Building a Patent Portfolio

Continuation and Divisional Applications

The USPTO requires that only one invention be claimed in a patent application. To save costs, however, and to ensure compliance with the USPTO’s first-to-file system, it is often strategic to include all information relating to an invention, or several inventions, in a single patent application.  In some cases, the applicant may not claim everything it is entitled to claim or may receive a Restriction Requirement or Unity of Invention Requirement requiring the applicant to choose and proceed with examination of only one of several inventions claimed.

Fortunately, the applicant is not required to relinquish the subject matter not selected or not claimed, but instead the USPTO provides a mechanism for obtaining patents on non-elected subject matter — a Continuation or Divisional Application. As long as a patent application is still pending, its specification can be mined for additional claims.

NRVIP Law will help determine your best strategy to build your patent portfolio.

In claiming several aspects of an Emergency Cellular Device, the applicant pursued claims to methods of communicating, a device itself, and electronic storage media comprising the software application. In this example, five patents were issued from one patent specification by filing several Continuation, Continuation-in-Part, and Divisional Applications to ensure coverage of the many aspects of the invention.

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