Continuing Patent Applications in light of Allowed and Rejected Claims

I’ve written about continuing applications before. I have seen lately in a few cases an unfortunate situation that the Patent Office places applicants. It fulfills the “bird in hand is worth two in the bush” line, and I have begun to advise clients slightly differently because of it.

The situation arises when a case has received an indication that some of the claims are allowable while others are rejected. It can be either in a first office action or a second, typically final office action. It is always great to see allowed claims, but clients typically also want to fight for the rejected claims, too. This is, of course, natural and rational; money was spent on the application, we try to get the broadest claims possible, and fighting for rejected claims gives you a chance at those broader claims.

However, responding to an office action rejection when some of the claims are allowed can jeopardize those allowed claims. When I first began working, I felt fairly comfortable that an indication of allowability meant the allowed claims were fairly safe. Now, though, presenting a response – especially when the response is in the form of an amendment – can cause the Examiner to withdraw the allowance of those claims.

This unfortunate consequence unfolds when the Examiner conducts a new search. If you have present amendments to the rejected claims, the Examiner will (almost) always conduct a new search to see if the newly-introduced elements are present in other prior art. If the Examiner does find other prior art, and thinks that the prior art is relevant to, and destroys the patentability of, the allowed claims, the allowance on those claims will be withdrawn.

You really cannot blame Examiners for doing this. If they find art that is relevant to any of the claims, they are obliged to enter it into the record. For whatever reason however – perhaps there has been new training on it at the Patent Office – I am seeing it more frequently than I used to. That is not to say that I’ve been inundated with such situations, but I have had enough within the last year or year-and-a-half that I have noticed and made a practice change because of it.

Now, I advise clients of this risk, and let them know that it may be “safer” to proceed with cancelling the rejected claims, issuing the allowed claims, and pursuing the rejected claims with a continuing application. I do not always advise this, however; whether I do or do not depends on a wide variety of factors including the client, the examiner, my experience with both, the nature of the prior art, the reputation of the art unit, the strength of the claims, the difficulty of the prosecution, and other factors. For this reason, I strongly recommend against adopting one strategy or another every time, and I discourage any unrepresented applicant from adopting this strategy without first speaking with an experienced patent attorney. Canceling claims, issuing claims, and filing continuing applications involves a lot of experience, strategy, and know how, and missteps here can cost you valuable protection that may not be recoverable.

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