Who Should Consider This Strategy?
You should consider this strategy if (1) you want to file multiple patents on one invention covering different aspects of the invention (2) you want to keep your upfront costs low.
Do you fit this description? Here’s an example of a person who could use this strategy. Jim is an inventor. He invented a new engine and wants to file several different patents protecting different parts of the new engine. For example, Jim wants one patent on the combustion chamber, one patent on the ignition system, and one patent on the cooling system. To save on the upfront costs of drafting and filling several different patent applications covering each of these aspects of his new and improved engine, Jim drafts one Super Patent describing each patentable aspect in sufficient detail. Jim could file the Super Patent and get an early priority date for what will eventually become three patents.
*note – Do you know why an early filing date is important? leave a comment if you don’t!
How Do I Use The Super Patent Strategy?
Step 1: Draft a Super Patent!
Drafting a Super Patent is the tricky part. Although this strategy saves money on the upfront costs of paying someone to draft, file, and prosecute several patents, the Super Patent Strategy requires that somebody put the time and expertise into drafting the Super Patent. An experienced inventor may be able to do this themselves and have a patent attorney review, revise, and file the patent application with the Patent Office. Once filed, each of the patentable aspects of your invention will have the same early filing date. It’s important to note that each patentable aspect of the invention needs to be throughly described in the Super Patent.
Step 2: Get a first set of claims allowed (ergo, a patent)!
Once your Super Patent has been filed, you need to get a set of claims covering the first aspect of your invention allowed. This will be your first patent. In the above example, maybe you want to get claims allowed on the combustion chamber. If that was the case, we would want to draft the first claim set to cover the combustion chamber and seek patent protection (claims) on just the combustion chamber.
Step 3: File a continuation application!
It’s imperative that you file a continuation application prior to paying the issue fee for the first patent (the Super Patent). A continuation application is a patent application is filed off of an existing patent application. A continuation application is identical to the patent application that it is filed off of, with the exception of the claims. The purpose of a continuation application is to seek further claims on an invention you have already described in the previous application (we call this previous application a “parent application”). The benefit of filing a continuation application is that the continuation application will be given the filing date of the parent application! Now, file your continuation application with claims directed to the second aspect of your invention. In the above example, you might chose to file claims directed at the ignition chamber. Prosecute this continuation application to get the broadest claims you can get covering the ignition chamber.
Step 4: File a second continuation application!
In step 4, you’ll want to file a second continuation application with claims directed towards the third aspect of your invention. Continuing with the same example, this application could have claims drafted to cover the cooling system of the engine. Note that this application might be filed three or four years after the Super Patent was filed. However, because the Super Patent contained a complete description of the cooling system, this patent will exist as if it was filed the day you filed the Super Patent! Moreover, you will have pushed back the costs of filing this application and prosecuting the claims directed towards the cooling system for several years.
Filing a continuation application off of an existing application creates a parent-child relationship. The patent that is filed first is referred to as the parent application and the patent that is off the parent application is referred to as the child application. We call this a patent family. It’s a very common practice to create these patent families to take advantage of the early filing date of the original parent application. It’s not uncommon for there be 8-10+ patents in a patent family.
Thank you for reading. I hope you found it useful. Please leave me comments! Happy Tuesday!