So your patent application just got allowed. Congratulations. Now what?
Most inventors are so excited by the notice of allowance that they sign the paperwork, pay the issue fee, and wait by the mailbox for their shiny new patent to arrive. While that can be a great feeling, there’s something else you might want to consider—especially if this invention is important to your business.
You might want to keep the application alive even after it’s allowed.
Why keep it alive?
Once your patent is granted, that specific application is closed. If you got a narrow patent, but wanted to try for a broader patent, you can’t just make your patent broader (you actually can, but that is a topic for a different day). Similarly, if you come up with an improvement to your invention the day after it issues, you can’t just add it to your old patent. You’d need to start from scratch. That means new application, new fees, new waiting, and a new timeline for the material in your original patent. Most importantly, if your original patent application was published more than a year ago, everything you failed to patent in that application is now in the public domain and unpatentable by anyone.
Luckily, there is a way around that. If you file a continuation application i.e. (a Continuation or aContinuation-In-Part (CIP) patent application) before your original application issues as a patent, you keep the door open for more patents tied to that same original filing date. Those new patents may be broader, narrower, drawn to a different invention, or cover new bells and whistles you came up with after you filed your original patent application. It’s like buying an option on future patent rights.
When does it make sense?
If your invention could be updated, improved, or spun off into something new, keeping your patent application alive is often a smart play. If you only have an issued patent, your competitor knows exactly what they have to do to get around your patent. If you only have a patent application, you can’t use it to stop your competition now, but you can keep them guessing as to how broad or how narrow your eventual patent may be.
If you have a patent and a patent application, you can not only sue them now, but also keep them guessing as to what new patents you might get down the road. Having a competitor with both an issued patent and a pending patent application makes it very difficult to hit the market with a competing product. Having both a patent and a patent application allows you to enforce your patent while broadening your claims, narrowing them if needed, or taking a new approach based on changes in the market or new competitor products.
Since there is no limit to the number of patents that can issue based on the original application, you have a lot of leverage. If a competitor starts creeping too close to your tech, you can branch off a new application with new claims that target their product more directly—so long as it’s still based on your original disclosure.
How do you do it?
Before your patent issues, you (or your patent attorney) file a continuing application with the Patent Office. That’s it. You don’t have to make any changes right away. You can even file the same claims again while you figure out your next move. What matters is that you keep the chain going before it breaks.
Once the original patent issues, that chain is cut. So timing is key.
Bottom line
You don’t have to choose between locking in your allowed patent and leaving room for future improvements. With a continuation, you can do both. You can have your patent—and keep the application alive in case your invention grows, evolves, or attracts unwanted attention.
It’s not right for every case. But for many inventors, especially those in fast-moving industries, keeping a continuation on file can be one of the smartest decisions they make.
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