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The What, Why, and How of Continuation Patent Applications

The patent application and examination process is not static. After an inventor files a non-provisional patent application, there may be opportunities to modify or expand claims made in the original “parent” application or even add new claims related to the same invention before the parent issues. Continuation-type patent applications are vehicles through which inventors can strengthen the protections afforded to their innovations and respond to changes in technology, the marketplace, or the invention itself.

What Is a Continuation Patent Application?

A continuation patent application allows a patent applicant to pursue patent claims based on the same specification and drawings as previously filed in the pending “parent” application. It is a new application with new claims and associated fees but must contain the same patent illustrations and written description as the parent application. It will also share the same priority date as the parent application.

While a continuation involves the same underlying invention described in the parent application, it includes different claims that may be broader, narrower, or related to another aspect of the invention than the inventor claimed in their original application. The scope of a continuation application’s claims cannot be identical to those in the parent application.

Instead, claims in a continuation application can be canceled claims from the parent application. Claims in a continuation application can also be strategically drafted to cover a competitor’s product or service (if adequately described but not claimed in the parent application) that came to market after the parent patent application’s priority date.

Divisional Applications and Continuation-In-Part Applications

Closely related to continuation patent applications, and offering similar benefits, are divisional applications and continuation-in-part applications.

Like a continuation application, a divisional patent application uses the same specification and patent illustrations as the parent application and shares the same priority date. Unlike a continuation application, which contains new or different claims, a divisional patent application presents patent claims that the applicant already filed with the parent application. These existing claims might have been voluntarily withdrawn or canceled, or the U.S. Patent and Trademark Office (USPTO) may have required the applicant to withdraw or cancel them.

A continuation-in-part (CIP) application, which repeats a substantial portion to all of the parent’s specification, can also be filed during the lifetime of the parent application. The key feature of a CIP is that it allows the inventor to add new material to the specification and patent illustrations not previously disclosed in the parent application. This is a great route for inventors who have refined their invention and want to add or remove elements or include new improvements developed after the parent patent application was filed.

Claims in the CIP application based solely on the parent application’s disclosure will receive the parent application’s priority date. Any claims based on the new disclosure or a combination of the old and new disclosures will only be entitled to the CIP application’s filing date.

Why Consider a Continuation Patent Application?

There are several reasons an inventor may consider a continuation patent application as part of their overall patent prosecution strategy:

  • Claiming Multiple Inventions. A patent can only claim one invention. However, many patent applications are drafted or determined by the USPTO to cover multiple inventions. For such applications, the USPTO may issue a “restriction requirement” that divides up the inventions and asks the applicant to select one for examination. The applicant can then pursue other non-elected inventions in a divisional patent application.
  • Broadening Claims. Patent applications are sometimes allowed with claims providing only “narrow” coverage. For example, an applicant may establish an immediate defense by expediting claims to a specific embodiment of an invention or by accepting an Examiner’s offer to allow a subset of the pending claims. In such circumstances, an applicant can use a continuation application to pursue “broader” protection. They may also file a continuation to cover alternative embodiments of the invention or block design-arounds.
  • Evolving Technology. Technology is constantly changing. A pending continuation application can be a way to draft claims covering future advances, so long as they are supported in the original parent patent application.
  • Deferring Costs and Decisions. Sometimes, an inventor needs to defer a decision or costs related to their invention. An applicant can use a continuation application to delay prosecution by “restarting” the examination timeline by abandoning the parent patent application for a continuation application with the same or similar claims.

Filing a continuation, a divisional, or a CIP application is a strategic decision that can significantly impact the strength and scope of protections your invention will receive. To learn more about continuation applications, when to file, and discuss which type is appropriate for your new invention, please contact the attorneys at The Dobrusin Law Firm.

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