Juggling your Patent Family to Keep Optimal Patent LifeFebruary 20, 2017

You’ve filed a patent application that is to a broad, important aspect of your product, and also filed a continuing application to one version of that invention. The narrower second-filed application receives a notice of allowance. But before you pay the issue fee, it is worthwhile to consider whether this second narrower will impact the life of the parent filing. An interpretation of an earlier Supreme Court decision by the Patent Office (in MPEP1490.V.D) implies that it is possible, if each application has claims that are obvious in view of the other, a terminal disclaimer may be required in each. If that narrower application ends up with a short life span, it could shorten the life span of the broader filing. What to do? One consideration is to provoke a restriction requirement among the claim groups by filing them all together. You will then have a safe harbor. Another option is to drop the narrower application with a short life span. In short, provoke restrictions where you can and look at the patent life of any application and other filings it may impact before paying the issue fee.

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