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How we used a continuation application to increase the monetary value of a patent?

Have you ever found yourself in a situation where a product was overlapping with most of the claim elements of your patent, but 1-2 claim elements were not available in the product, hence, a complete overlap wasn’t possible? OR you noticed a new feature launched by Google that appears to be very similar to your invention but you never thought about it when you filed your patent.

Does this mean you missed the opportunity? Nothing can be done?

If yes, then you are on the right page. This case study will come in handy in increasing the value of your patent in such a scenario.

John, a patent broker from Washington DC, is one of our oldest clients. We worked on a lot of projects together and this time his objective was to find products overlapping on his patent. The patent was covering a technology that could analyze different types of sounds viz. Vehicle noise, human sound etc. It could also analyze specific proportions of each of these types of sounds.

We began with our analysis and were able to find a product from a large company XYZ Corp (name changed for anonymity) which was working quite similarly as described in the patent. The issue, however, was that 1-2 claim elements were not explicitly available in the product.

The issue was:

  • The product was analyzing the different type of sounds (Overlap).
  • The product wasn’t detailing whether or not it was analyzing specific proportions of each of these types of sounds (No Overlap).

Since the overlap information was not complete, John wouldn’t have been able to get the real value of his patent. We had an interim call with John where we narrated the whole scenario, and our willingness to help him make most out of his patent.

“You can’t connect the dots looking forward; you can only connect them looking backwards. So you have to trust that the dots will somehow connect in your future. You have to trust in something—your gut, destiny, life, karma, whatever. This approach has never let me down, and it has made all the difference in my life. 

 — Steve Jobs

As the call was late in the night, next day, Aditi and I did a ‘What do we know? What have we learned?’  type of analysis.

We figured that if somehow the claim element relating to the specific proportions of each type of sounds was not present, John could have realized the full monetization potential of his patent. This was a lead for us.

We started thinking if this could be possible. To begin with, we thought of looking for any pending application in the patent family. The reason for my motivation is described in my previous article:  Filing Patent Continuation Applications to Enhance Value of a Portfolio

As they say, fortune favors the brave. After some searching in the patent family, we found a pending application which had just received an NOA [notice of allowance]. This indicated that we still had 3 months to file a patent continuation application.

The next step was to identify whether or not the troubling element can be removed.

We then explored the patent specification and prosecution history. We found that the element was present in the claims during the initial filings. The prosecution history revealed the availability of prior art references for that element. Thus, it wasn’t novel while the other elements were.

We figured that even if we removed that claim element, we could get the claim granted as the novelty of the patent would have remained intact. Further, removing this limitation would lead to full overlap and to the increased monetary value of the patent.

We shared the analysis and the refined claim with John and proposed to file a continuation application. John liked the idea of filing the continuation application with the amended claims to maximize the return on the patent family.

At the time of writing of this piece, the continuation application is in the prosecution phase in the PTO. We are positive when granted, John would be able to make the most out of his patent family. Like John, if you too are willing to increase the monetary value of your patents, and need a partner to take care of the technicalities, this is what you should do. 

Authored By: Rohit Sood, Manager, Patent Infringement, and Aditi Dubey, Research Analyst, Infringement.

Editor’s Note: Want to monetize your patents and not sure which strategy to employ? Fret not, this ultimate summary page of patent monetization strategies will yield answers to all the questions you would possibly have — Click here to read.

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