Continuing Applications

Posted Monday, October 24, 2011.

Once a patent application is pending at the USPTO, additional applications can be filed for consideration of patentability of new patent claims. When the additional application claims the benefit of a priority date which is the filing date of the original application, the additional application is called a “continuing application.”

There are different types of continuing application, including a continuation application, a continuation-in-part (CIP) application, and a divisional application. All can be filed up until the point that you pay the issuance fee in the original application.

A continuation application can be used when you have additional patent claims you want considered that are drawn to the invention disclosed by the original application. For example, while your application is pending, let’s say a competitor begins offering for sale a new product that you believe is close to the invention for which you’ve already filed an application. It may be that your existing patent claims already encompass the competitor’s product, but it might be worth filing a continuation application with new claims that more closely describe the competitor’s product. Since your continuation application gets the filing date of your originally-filed application, which is prior to the availability of your competitor’s new product, the new patent claims might put you in a better condition for enjoining the competitor. This strategy works as long as your new patent claims in the continuation application are supported by the original specification, which must be exactly the same in the continuation application (i.e., no new matter).

Another example of when a continuation application might be appropriate is a situation where an examiner will grant a patent on your original if you make changes to the original claims. You may not agree that the original claims need to be modified and feel like you have a pretty good argument that the original claims are patentable as they stand. Still, as the saying goes, a bird in hand beats two in the bush. A possible tactic is to make the change the examiner requests to get the first patent issued while filing a continuation application with your original claims untouched. That way, you get the patent the examiner is offering, but you still keep your original claims under consideration. It may cost more to do it this way, but it’s worth the added expense.

A continuation-in-part application is used when there is a new idea that comes to light during the pendency of the original application. You can file a continuation-in-part (CIP) application that discloses the original content along with the new idea. Since the new idea constitutes new matter, the filing date for the new idea is the filing date of the CIP, while the filing date for the original content is the filing date of the original application.

A divisional application is a type of continuing application that is used when an examiner has issued a restriction requirement. When you file an application, generally you try to get your money’s worth, so you disclose as much as you possibly can hoping for a very broad patent. If you actually disclose two inventions in your original application, however, the examiner may issue a restriction requirement. The fee you pay the USPTO for examination of an invention for patentability only gets you an examination of one invention. If the examiner sees two inventions in the application, the restriction requirement is basically asking you to choose which of the two inventions you want examined for the fee you paid. You elect an invention for examination in the original application, withdrawing claims drawn to the second invention. But if you still want the second invention examined, you file a divisional application in which you list the second set of patent claims and pay a second examination fee to the USPTO. The divisional application gets the filing date of the original application, and you could potentially get two patents.

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