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Articles - Smart Patents

Smart Patents

By Roger Maxwell
Harvard Business Review – April 2002

Is your intellectual capital at risk?

VisorSoft Executives were jubilant when the patent finally issued on their new face-recognition software. A pioneer in the field, the company had created a robust program that could compare a stored face-print with a person’s live image and determine if they were the same. The software had a variety of security applications, like unlocking doors for authorized visitors. VisorSoft expected to recoup its development costs-as well as realize substantial profits-through licensing agreements with airports, banks, and many other businesses that put a premium on accurate identification.

Then a copycat product appeared. The competitor’s software operated exactly like VisorSoft’s but was marketed as a forensics tool to find matches in a database of mug shots. VisorSoft saw it as a clear case of patent infringement, but the competitor’s attorneys disagreed: Their product did not “verify” identity by the one-to-one matching, as claimed in VisorSoft’s patent. Rather, it “determined” identity by one-to-many searching. Suddenly VisorSoft’s hope of recouping its investment, much less turning a profit, seemed in jeopardy. Trapped by oversights in its patent language, VisorSoft saw little recourse but to engage its competitor in expensive, protracted litigation, with no guarantee of winning.

Visor Soft isn’t a real company, but the experience described here is very real. Many business undermine there own intellectual capital by filing faulty or incomplete patent applications. There is, however, a way to avoid the problem – to retroactively change a patent’s language. The secret lies in a little-used legal device called the continuation patent.

Here’s how it works. When you file a conventional patent application describing your invention, a Patent Office examiner reviews the application and ensures that the invention you describe is truly novel. This examination period often lasts several years and involves an ongoing dialogue between inventor and examiner as the patent’s precise language is refined and finalized. When the conventional patent finally issues, it is almost impossible to change. But a continuation patent allows you, in effect, to extend this examination period throughout the 20-year life of your patent, allowing you to easily make changes a decade or more after the original issues.

To understand continuation patents, you must first understand the anatomy of a conventional patent. Along with a description of the invention, patents included citations of “prior art,” closely related publications and patents that predate the described invention. Patents also include “claims,” one-sentence descriptions of what the patent owner has the exclusive right to make, use, or sell for the life of the patent. Patents usually have many claims because a single invention can be expressed in several ways and in several layers of detail.

Applications for continuation patents are virtually identical copies of the original application, usually filed just weeks before the original patent issues. When the original, or “parent,” patent does issue, this “child” is just entering its own extended period of examination.

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