Last Chance To Mine Patent Applications To Expand Coverage?

The clock is ticking on a new set of patent rules designed to curtail substantially a patent owner's ability to expand the coverage of its key patent assets by filing continuation applications. Patent owners have long enjoyed the flexibility to re-evaluate pending patent applications and draft new claims covering additional concepts of an invention, provided the concepts are disclosed fully in the patent application, and the application has not yet been issued. These new claims may be introduced in a continuation application, which maintains the benefit of the original patent application's early filing date against prior art.

While the final form of the rules has not been publicly released, it is widely believed that the United States Patent and Trademark Office (PTO) will soon enact new rules limiting the number of continuation applications that may be filed. It is not clear how the new rules will apply retroactively to existing patent applications. Thus, the time is now to