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By J.D. Houvener
Patent Attorney and Founder

Hey everybody, I’m J.D. Houvener, your host of the Bold Today Show, where you, the inventor or entrepreneur, get your daily inspiration so that you can go make the world a better place.


We’re in step 12 of our series on how to get your patent granted, how to get your invention all the way to that point where you’ve got that patent. While we’re talking about this prosecution phase, and patent prosecution means you’ve already filed your application, you likely have already gotten an office action or two and maybe even gone through a petition or appeal. As we talked about yesterday, there are actually different more types of applications that you can file while your application is pending, two main types called divisionals or continuation applications.

Divisional applications are those that stem from a core non-provisional filing, and they usually happen as a result of what’s called a restriction office action where an examiner says, “time out, you have got more than one invention here, and I’m only going to allow part of your claim set to go through as one invention. This other claims one through four are actually drawn to a totally separate invention, and it’s going to burden our Patent Office by trying to conclude all of these in one invention. You’ve actually got two inventions here, Mr. and Mrs. Inventor. What are you gonna do now?” And so what they do is they make you pick one through four or five through twenty. For example, we decide to pick five through twenty, you file one through four on a separate divisional patent application. What’s great here is that it gives you, the inventor, a radiculopathy – then say, use the same specification that was filed originally and then expand on those four claims and likely add sixteen more. Do you get twenty claims for free? They’re all included within the application cost, and so you can get more detailed and nuanced about those four claims, expanding the rights and creating what’s called a patent portfolio.

The second type is called a continuation application, and this happens almost all the time because inventors invent and then they don’t stop. You file your patent application and you keep working on that invention, keep optimizing and improving, and you found a way to make it even more efficient. You found a way to make it stronger, a different material that if added just right and positioned in the right way will make it really work. This is when you want to file a continuation application. Midway during prosecution, you may file an additional claim set and use that under a totally separate parallel patent application that will get separately examined and get separately processed. One of the main tests though is you’ve got to make sure that those improvements are actually patentable above and beyond your original filing. The examiner is going to look at and use your own patent application, your non-provisional filing claims on the core invention to make sure that it’s novel and non-obvious above and beyond what the base filing was.

Lots of complication there, we’re willing to help you understand every single part of that. The key to know is that we want to help you build not just one patent but build a portfolio because you’ve invented something that likely is going to be several patents deep that give you the broadest protection in the marketplace and when it comes time to enforcing your patent rights, the best chance in getting either a license or a clear settlement in your favor. I’m your host J.D. Houvener of the Bold Today’s Show. Go big, go bold.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at