There are many different strategies for filing and maintaining your patents in the United States. Each strategy depends on your particular industry, your competition, your company’s purpose for getting the patents, and how actively you will be enforcing the patents. Here are three quick summaries of strategic considerations to consider with each of your patents and products that you should discuss with your attorney to see which strategies work best for your situation:
File Fast Strategy vs. File Complete Strategy:
If your goal is to get early priority in a quickly developing industry, first brainstorm the invention to get as many related ideas down on paper, file a provisional application early on the ideas, run the various ideas through engineering, product design and marketing, wait one to three months while you continue to develop the ideas and then brainstorm the idea again prior to preparing and filing a utility application on anything that seems possible for you or a competitor.
If your goal is to get a complete filing but time is not as crucial, you may not need to file a provisional application first, or you may decide to file a provisional application and wait longer before filing the utility application to give the ideas more time to develop through your internal processes and for new ideas to arise.
One-Shot Strategy vs. Forest Strategy:
If your goal is to protect just a single product or service, an application can be drafted to cover just that product and you can choose to have only one patent issued for that invention. The costs are less than prosecuting multiple patents, but the protection may not be as good because all of your protection is based on that one shot.
If your goal is to keep competitors far away from the product area, the product can be brainstormed to determine all of the ways to achieve the benefits of the product and multiple patents can be issued to create many obstacles to competitors entering that arena. As each patent issues, the invention can be reevaluated and brainstormed to determine how to design around that patent and fill in the gaps between the multiple patents issuing until a forest of different sized patent “trees” has been formed around the actual marketed product. The denser the patent forest, the less likely it will be that competitors will venture into competition with that product and the easier it will be to enforce your patents. Which approach you take depends a lot on the markets and revenue you expect for your product.
Chain Strategy vs. Simultaneous Strategy:
If your goal is to get the best protection at lowest cost and more complete protection is not needed quickly, multiple related applications can be chained together one application being filed, prosecuted and issued at a time followed by another filed just before the previous application issues. This strategy is used when there are multiple inventions filed in the same application, or when continuation or divisional applications are being filed.
If the goal is to obtain more complete protection quickly, many patent applications (even continuation, continuation-in-part and divisional patent applications) can be filed simultaneously to maximize prosecution options and to obtain the most patent protection as quickly as possible. One potential disadvantage to filing many related, simultaneous patent applications is that the other co-pending patent applications do not have the benefit of knowing what happened during the prosecution of the other related applications (unlike the chain strategy). This may result in some duplicated effort between the applications, but the overall approach generally results in many patents issued more quickly.
For each of these strategies, a balance is usually found somewhere between the compared strategies, and multiple strategies are generally combined to meet the goals of the company for a particular product.