1、 Why continue to lay out US patents in 2021 despite the earliest priority date being 1996?

Recently, while handling a case, the author occasionally learned about a US patent application with a filing date of October 23, 2017, but the earliest priority date was December 12, 1996. Seeing this basic information, one cannot help but wonder, how can a patent filed in 2017 claim a priority date of 1996, 20 years after the earliest priority date? Upon careful study, it will be discovered that there is a profound mystery behind this case.

This case, US 15/791386, states that “this application is a subdivision of US patent application serial number 11/015337, filed on December 17, 2004, which is a continuation of US patent application 09/929826, filed on August 13, 2001 (now US Patent No. 6866671), which is a continuation of US invention patent application 09/418726, filed on October 15, 1999 (now US Invention No. 6331181), and which claims priority to provisional application 60/111713, filed on December 8, 1998. US patent application number 09/929826 is also part of the US patent application serial number. Continuation. US Patent No. 09/406360, filed on September 28, 1999. Continuation of US Patent Application No. 6346072. US Patent No. 08/975617, filed on November 21, 1997, is now US Patent No. It claims priority to US provisional application 60/033321, filed on December 12, 1996. ”. The timeline analysis is as follows:

Further through patent cloud( https://app.patentcloud.com/ )According to the search, there are 1060 patents belonging to the same family in this case. As of January 27, 2021, one US patent application (US20210220066A1) has been submitted and is currently under examination.

2、 US Patent Layout Strategy (Temporary Application, Division, Continuation, Partial Continuation)

1、provisional application

Applicants can submit a provisional application to the United States Patent and Trademark Office through simple application documents (such as only requiring a specification or sketch, or accepting Chinese and simple disclosure documents, necessary applicant or inventor information), which can seize one priority day for submitting a formal application within one year. Temporary applications are becoming increasingly popular among applicants due to their simplicity, speed, and low cost (as of June 2022, large entities are priced at 300 USD, small entities at 150 USD, and micro entities at 75 USD). After the temporary patent application is submitted, the applicant can add the “patent application in progress” mark to the relevant products. Although it is not actually protected, it can be used for promotion, attracting investors or business partners, and can give the applicant one year to consider whether to file a formal application. If the temporary application does not occupy the patent validity period of the formal application after it is filed (the patent validity period starts from the date of formal application submission).

2、Divisional Application

In the United States, applicants can overcome the singularity defect of patent applications through divisional applications. In the actual examination process, US examiners usually conduct a singularity examination of the patent application before the actual examination. Based on the consideration of double patenting, if the examiner’s patent application contains more than two or more inventions, a notice will be issued requesting the applicant to limit the patent application to only one invention. For inventions not included, the applicant may continue to file a divisional application with the United States Patent and Trademark Office. For divisional applications, the specification cannot exceed the disclosure scope recorded in the original application, therefore the filing date and priority date of the divisional application are the same as those of the parent application. However, the applicant can only submit a divisional application before the patent is granted or the patent application is abandoned.

3、Continuation

The applicant can submit a new patent application by applying for an extension, which can add the parts of the invention disclosed in the original specification that are not included in the original claims to the claims of the new patent application. For the continuation case, the specification cannot exceed the disclosure scope recorded in the original application specification, so the applicant and the parent case have the same filing date and priority date. Applicants can submit a Continuation application before the patent is granted or before the patent application is abandoned. In practical work, the applicant may have written a smaller scope of protection in the parent application, but before obtaining the authorization notice or confirming the authorization without paying for the license, the applicant resubmits a continuation application, which writes a claim with a larger scope of protection, thus obtaining a patent with a different scope of protection. As shown in the above example, by continuously applying for extension cases, some patents can remain without examination results. When it is found that a competitor may infringe, a claim covering the competitor’s product can be submitted, which can effectively sue the competitor for infringement.

4、Continuation-in-part

After the parent application is submitted to the United States Patent Office, if the applicant has further improvements or improvements to the invention (which must meet the requirements of novelty and inventiveness in the United States), the newly added improvements can be protected through a partial continuation case. Therefore, some continuation cases may have the same and different parts as the parent case. For the parts that are the same as the parent case, their filing date and priority are the same as the parent case, while for the parts that are different, their filing date is the filing date of the partial continuation case.
In summary, the following list represents the similarities and differences among divisional applications, continuation cases, and partial continuation cases.