There’s nothing quite as sweet as when your patent application earns its “Notice of Allowance” and is about to become a patent. It means your invention was truly novel, and your patent attorney did a good job. In a short while you’ll be able to stop any competitors who are
copying your product – or rest easy knowing that if any infringers pop up, you have the power to stop them.
Hopefully. A wise old patent litigator told me decades ago that he estimated that 25% of patents are invalid. Maybe he said that only 25% are valid – it doesn’t matter. But that scary advice taught a young patent lawyer how easily patents can be challenged, and motivated me to avoid the pitfalls that can get patents invalidated. Still, even when the best patent lawyer does his best work the unexpected can occur. No one has perfect foresight about how a good patent might be interpreted by a hostile lawyer (the “Weasel” of the title).
When we send a cease-and-desist letter to a patent infringer, we often receive the “Weasel Letter” in reply. No matter how strong our case, and how powerful the patent, we sometimes get a long-winded letter that attacks the patent and leaves you thinking the patent is worthless. It usually revolves around some “Weasel Word” interpretation in the patent claim. The letter will twist the language in a way that creates the false impression that the competitor’s product doesn’t infringe the patent. Maybe we used one term in the patent, referring to a reciprocating “bolt” having some important feature, and the competitor’s “bolt carrier” has that patented feature. So they argue that a bolt carrier is different from a bolt and thus – no infringement.
Now, we could have easily used the “bolt carrier” if we had wanted to, but it didn’t seem necessary at the time. (If we had, the Weasel would have found something else for his rodential defense). Here’s the most important legal principle behind what I’m about to reveal:
You can’t change a patent after it’s granted.
This means we’re tied to the language we used at the time, before seeing what the infringer’s product looks like, or what Weaselly defense their lawyer would come up with. If we had the perfect 20-20 hindsight we’d go back in time and make that change, get it approved by the examiner, and then rub it in the Weasel’s nose. But that would require a Miracle.
The rule says you can’t change a granted patent, but we know that we can change the claims – the words that define the scope – of a pending patent application. So the simple solution to gaining strategic flexibility and avoiding Weasels when you have a grated patent is also to have a pending application. Here’s all it takes: Before the first patent is granted, we file a “Continuation” patent application. That’s simply a spin-off that lets us pursue different strategies while enjoying the power of the granted patent. The classic case is when we were forced to narrow the claims to win an allowance form the examiner, but we believe it’s worth fighting for broader protection. Other beneficial situations will be revealed below.
But let’s imagine that we are truly happy with the protection we got. This transpires in an important phone call I call the “Exit Interview”. It’s included in our charges for administering the payment of the Issue Fee. In it, I go over the granted claims with my client, and we do our best to attack them and find any weaknesses. Sometimes, we’ll know exactly the weakness because we had to make a compromise to win the patent. But imagine we’re totally delighted with the protection. We look at the allowed claims from the viewpoint of a hostile competitor and try to remove even one limitation to avoid the claims while coming up with a competitive product. That’s called “designing around” the claims, and I often help my clients do that to legally avoid the patents of their competitors.
In the Exit Interview we scrutinize every word, and sometimes we just can’t think of any way to broaden or strengthen the protection. That’s good news. But even in the ideal good news scenario we still have to worry about future Weasels. So if the invention is an important one that’s likely to face an infringer in the years ahead, the Keep-Alive strategy might be just the solution.
It’s as simple as this: When your competitor’s lawyer knows that you have the 20-20 hindsight power of a pending patent application that you can adjust to defeat most Weaselly defenses, it’s like having a can of Weasel-Repellent Whoop-Ass in your pocket, and they know it. Your pending application is your Trump card, and it makes the other side much more reasonable. It means lawsuits are less likely because they know even if they come up with some clever defense, you’ll be back with new claims that avoid them. Instead of being tied to the words we used in the original patent, we can create the idea claims for the exact situation. Patent defense lawyers hate the Keep-Alive strategy because it takes away much of their power.
Here’s the process – and it’s all about buying time as cheaply as possible: Before your patent is granted we file a continuation application -this includes a U.S. Patent and Trademark Office filing fee, and our administrative charge, but doesn’t require you to invest in hours of legal analysis. The application spends maybe a few months until the examiner picks it up, scratches his head and wonders: “What’s Langlotz up to this time? – I don’t see any new strategy here – rejection!” That’s just what we expect, and it gives us three months to reply, plus two more months with nominal extension fees. Our response is the equivalent of a simple “Is not!” that we know will generate a Final rejection but won’t cost my client more than another nominal administrative charge. No brilliant legal analysis is needed in the Keep-Alive process. Then when we get that rejection, we have those three plus two months to take our next action: restart the process with a new Continuation filing (actually a Request for Continued Examination).
All that takes about a year and a half after we had our exit interview, at a limited cost. Considering that patent lawsuits can easily cost in the six- or seven-figure range, anything that keeps your competition away without having to sue them is extremely valuable. Even if you have to sue, anything that increases your odds of winning or simplifies the lawsuit can be worth a fortune. Which makes the cost of “Keep-Alive” a bargain. The typical average cost per month is just a few hundred dollars and varies based on how slow or fast the examiner is to respond.
The nice thing is that you can decide to let it go and be satisfied with your patent at any time and stop the nominal costs if you’re no longer worried about Weasels. Or, you may gain other insights that make you glad you kept the case alive.
After I share the benefits of “Keep-Alive” in the Exit Interview, I remind my clients that there are other important reasons to file a Continuation application besides the Keep-Alive strategy. The best thing is that all these benefits are enhanced by the inherent benefits of the Keep-Alive strategy.
Benefit #1 – Pursue Stronger Protection
This is the classic – we narrowed the claims to get the patent, but we believe broader protection is deserved. We might fight for broad claims we had to withdraw, or we may craft new claims we think will be allowed and provide broader protection.
Benefit #2 – Protect a Different Invention
Sometimes, we’ll file a patent application that discloses several different independent inventions. Because only one invention can be pursued in an application, we start with the most important one. Say we have a new firearm configuration that also has a novel safety selector. If the new configuration can be employed without the new safety, and the safety can be used in a convention platform, then those are independent. After the time it takes to get the main invention allowed, the safety selector might prove to be valuable, and we craft new claims to protect that in a Continuation application. Here’s the key point: the secondary inventions application serves to Keep-Alive the main invention! So even if the secondary invention didn’t justify a Continuation, the Keep-Alive benefits may tip the scale.
Benefit #3 – Protect a Recent Improvement
We can always change claims strategies, but we can’t add new drawings or updated inventions to a patent application. When we have a new version of the old invention with its own potentially patented features, we file a Continuation-in-Part (CIP) patent application that adds the new updates. This lets us protect the new developments, and also keeps alive the opportunity to pursue future alternative strategies for the original core invention. Where we might have considered simply filing a new patent application on the new invention, framing it as an update to the original gives the Keep-Alive benefit to both.
Benefit #4 – Beating Back Bad News
Imagine you have your patent, and we fire off a letter to your fiercest competitor. To avoid a million-dollar lawsuit or shutting down a profitable product line, they’ll leave no stone unturned. That might include a search for “prior art” (preexisting technology) that we didn’t know about and the patent examiner didn’t consider when granting your patent. If we hadn’t kept the case alive it could be a smoking gun that kills your patent. But with the Keep-Alive strategy, we thank your competitor for bringing it to our attention, disclose it to the patent examiner in the pending case, and get the best protection we can in light of the prior art. Often that protection is good enough to shut down the competition, and sometimes the examiner will grant the same protection because the prior art wasn’t as strong as the other side thought.
Most of these added benefits include the expected investment in attorney analysis and other work, so aren’t as inexpensive as a basic Keep-Alive strategy alone. These are strategic options that are weighed on a case-by-case basis and the Keep-Alive benefits are simply an added bonus that adds value.
But here’s another wrinkle that my clients seem to think is appealing: even if one of the above lawyer-intensive paths makes sense, we can even use the cheaper basic Keep-Alive strategy to put off that investment. We might know exactly what claims we’d like, or what arguments to make – but there’s no urgency. Instead of investing now in the attorney time to pursue those options, they instead defer those steps, investing only a trickle to keep the case alive until circumstances warrant the bigger project.
We have other strategies when a client has a large and complex family of related patent applications all approaching allowance around the same time. To minimize the costs of the Keep-Alive process without sacrificing benefits, we can file one consolidated Keep-Alive application and avoid having several cases incurring those filing and extension fees along the way.
This article helps explain the Keep-Alive procedure, but is no substitute for the Exit Interview. That critical conversation is still required to be sure that my client and I put our heads together to fully understand the strengths and limitations on the patent protection we have successfully obtained, and to formulate a long-term strategy. Because we all become wiser with time as things play out, it’s often smart to put off irrevocable decisions that close doors permanently, and Keep-Alive many powerful legal options.
Because this is usually a complex legal matter that varies from case to case, I invite my readers to contact me to discuss how the benefits of Keep-Alive might work for them.
If this newsletter reaches you in time, this is a reminder that I’ll be at SHOT and will be happy to drop by your booth or to arrange meetings with non-exhibitors. Just send an email to make arrangements.