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I've been told that having an ongoing continuation application on an open submission is often desirable, and increases the value of the patent, should one seek early sale.

Also, by googling this subject, I found an article claiming that "In some cases, your patent attorney may recommend filing your continuation application with a request for deferred examination.", without explaining why.

What would be an ideal strategy to maximize flexibility and value of a submission? Maybe design it so that some aspects can be added in a follow-up continuation application, so that this scheme would also leave open doors for possibly needed fixups to the initial application? And why having a continuation application with deferred examination be beneficial? Perhaps to keep it as "backup" until the initial application has been evaluated? And finally, should this be the reason behind such setups, would it be advisable to pay the priority examination for the original, initial application?

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    Excellent question. Providing a link to the article you referenced might help the answerer. – Eric S Jul 16 at 17:08
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The advantage of having a continuation application on the "back burner" is to provide continuity with the initial priority application. This keeps any new publications from becoming prior art to an application that you are pursuing.

Sometimes it is strategic to quickly get some allowed and issued claims even if they are narrow. If there was no continuation on file before the first application/patent issued then anything later filed is subject to prior art that the original was not. Prosecuting a continuation right after, or even before, the narrow claims are issued has the advantage of getting on with the task of getting the broader claims you desire. It might involve many RCE's, an appeal, etc.

What you are asking about is not a continuation that is being actively prosecuted but one that is sitting at the USPTO deferred under 37 CFR 103(d). This must be requested before any office action and the publication can not be differed. You can request this for any amount of time up to 3 years. However the clock on the term is ticking. All the patents issued will terminate based on the initial priory date.

Reasons for a late prosecuted application might be to target claims to specific competitor's product. Of course any claims must be completely supported by the priority application as-filed. A competitors product might already fall under some issued broader claim, but a relatively narrow claim that is spot on a competitors implementation might give you a leg up in litigation or settlement negotiations.

The scenario often suggested is the company's chief counsel shows the claim to the CEO and the CEO immediately sees that they are screwed without any sophisticated claim construction discussion.

Of course there are also possibilities for divisionals, and continuation-in-part to be filed that are continuations of the continuation. To get expedited examination it needs to be requested at the time of filing, so the back-burner application can't get that treatment. But a new application that was a continuation of it could.

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  • Thanks, very clear explanation! Follow up related question: is it possible, after the original patent has been granted, like through expedited examination, to use such a deferred continuation application "in the backburner" to actually file an additional continuation-in-parts application (or a divisional)? – Pa_ Jul 16 at 20:17
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    see edited answer – George White Jul 16 at 21:52

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