The U.S. law allows inventors to file different types of patent applications to cover new improvements or different aspects of their inventions. These types of patent applications include continuation, divisional, continuation in part, and reissue. Continuation and continuation-in-part patent applications are generally available in the U.S. only, hence we will discuss these two types of patent applications in more detail.
Continuation Patent Application
An inventor may file a continuation patent application when a patent examiner has allowed some claims but rejected others in a patent application, or when the inventor feels that they have not exhausted all the useful ways of claiming different embodiments of the invention during patent prosecution and want to make changes after the initial filing or to establish a right for further examination by the U.S. Patent and Trademark Office.
The continuation patent application is a second patent application for the same invention claimed in the prior nonprovisional patent application which allows the inventor to make those required changes in different aspects of the original (or "parent") application. By submitting a continuation patent application, before the original prior patent application becomes abandoned or patented, it claims the benefit of the parent, as well as its filing date under 35 U.S.C. 120 or 365(c).
The continuation patent application is filed under 37 CFR 1.53(b) (or 1.53(d) if the patent application is a design application). The name of at least one inventor named in the prior nonprovisional patent application must be included by the inventor in the continuation patent application. Also, the same disclosure must be presented in the continuation as that of the original patent application i.e., the continuation should not be including anything which would constitute a new matter if inserted in the original patent application.
As mentioned earlier, a continuation patent application allows an inventor to make modifications in the prior nonprovisional patent application as long as the patent application hasn’t been approved or abandoned. The Manual of Patent Examining Procedure (MPEP) explains that “at any time before the patenting or abandonment of or termination of proceedings on his or her earlier nonprovisional application, an inventor may have recourse to filing a continuation to introduce into the application a new set of claims and to establish a right to further examination by the primary examiner.”
With a continuation patent application, an inventor gets several strategic benefits that increase the scope of his patent application without the need to file an entirely new patent application and thereby losing the original filing date. Also, from the perspective of the Patent Office, if the same examiner examines the continuation patent application, the examination can begin with the knowledge of the previous prosecution. Thus, the examiner is able to examine the patent application more efficiently and can result in a higher quality first action and shorter overall prosecution of subsequent continuation patent applications.
Benefits of Filing a Continuation Patent Application
1. Broader Claims: Sometimes, examiners allow patent applications with claims providing only “narrow” coverage. For example, an investor choosing to establish an immediate defense often expedites claims to a specific embodiment of an invention or accepts examiner’s offer to allow a subset of the pending claims. In such circumstances, a continuation patent application is useful for pursuing “broader” protection and covering alternative embodiments of the invention.
2. Claim Minor Variations: Due to various reasons, the inventor may take the benefit of maintaining the pendency of the subject matter disclosed in the patent application that allows the patent owner to craft new claims for the same disclosure at a later date. For example, separating the claims by market so that one set of claims may be licensed only into one market and another set of claims may be licensed only into another market, or separating claims into standards-essential and not standard-essential, or into functional claims and ornamental claims; and so on.
3. Evolving Technology: In a world of continually evolving technology, a pending continuation patent application can provide wheels for drafting claims covering future advances, and can be offensively used to cover a competitor’s product, as long as supporting matter is present in the original parent patent application.
4. Law in Flux: Similar to technological advancements, the law is also in a constant state of change. The Supreme Court’s decisions in Myriad and Alice limiting what is eligible for patent protection, have led to legal developments that fundamentally altered the patent environment. Continuation patent applications are useful for addressing legal developments, for example through new claims that workaround, or exploit, the changes.
5. Litigation: For patentees engaged in, contemplating, or expecting litigation, continuation patent applications allow reacting to the lawsuit’s outcome – like drafting new claims to avoid newly discovered prior art.
6. Creating Uncertainty: In addition to building defensive and offensive positions, uncertainty around the final scope of a patent can be created with continuation patent applications (usually with broad claims) for patent protection and to provide a deterrent to competitors.
7. Maximize Value: A patent to be sold or licensed in the future can be maximized of its value by maintaining a continuation patent application, allowing the purchaser or licensee to use the continuation to pursue their objectives.
8. Defer Decisions or Costs: Continuation patent applications come in handy when it is necessary to defer a decision or cost. They can be used to delay prosecution, for example, the examination timeline can be restarted by abandoning a patent application in favor of a continuation patent application with the same or similar claims.
Drawbacks of Filing a Continuation Patent Application
1. Increased Cost: The cost is increased by pursuing multiple continuing patent applications. Each application and the patent, in the family, requires separate filing, issuance, and maintenance fees that increase the USPTO fees, in addition to that increased patent agent or attorney fees are also applicable. Such costs may restrict the small companies and independent inventors to file continuing patent applications and restrict new commercial ventures.
2. Increased Time: A patent application in the U.S. may take a minimum of 2 years to be granted. When multiple continuation patent applications are filed, the time taken for the prosecution and granting of these patent applications may require several years.
3. Less Remaining Patent Term: Patent terms are measured as 20 years from the earliest filing date. The filing of a continuation patent application instead of a separate independent patent application results into the term of any utility patent maturing from the continuation patent application is calculated from the filing date of the parent application and not from the filing date of your child continuation patent application. Thus, when the parent application expires, any continuation patent applications claiming its priority date will also expire. If the time taken for the prosecution and granting of the continuation patent application is taken into account, the continuation patent application may have a lesser active time.
4. No New Matter Can Be Added To The Disclosure: The continuation patent application inherits the parent application’s priority date but it also inherits its specification limited to the parent application’s disclosure. The claims added by the continuation patent application are restricted to the parent application’s disclosure, the new matter related to any recent developments that occurred since the original patent filing cannot be incorporated in a continuation patent application.
Continuation-In-Part (CIP) Patent Application
Where a continuation does not allow the addition of new matter to the specifications, a Continuation-In-Part (CIP) gives the inventors the ability to do so. CIP can be another patent application filed during the lifetime of an earlier nonprovisional patent application. A substantial portion or all of the earlier nonprovisional patent application is repeated and adding matter not disclosed in the said earlier nonprovisional patent application is allowed so that the inventors are able to include "enhancements" to the original design that were developed after the parent application was filed. The new material added is only to describe/depict the improvements. The majority of the specifications will remain the same as the invention in the CIP is mostly the same as the invention in the parent application. The continuation-in-part patent application may only be filed under 37 CFR 1.53(b). The continuation-in-part patent application must also claim the benefit of the prior nonprovisional patent application under 35 U.S.C. 120 or 365(c).
Note that The Manual of Patent Examining Procedure (MPEP) explains that, “an application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation" or "continuation-in-part" of the provisional application since an application that claims the benefit of a provisional application is a nonprovisional application of a provisional application, not a continuation, division, or continuation-in-part of the provisional application.”
The mere filing of a continuation-in-part patent application does not itself create an idea to be taken as true that the inventor acquiesces in any rejections which may be outstanding in the copending national nonprovisional patent application or patent applications upon which the continuation-in-part patent application relies for benefit.
A continuation-in-part patent application is permitted to claim the benefit of the filing date of an earlier nonprovisional patent application if it complies with the requirements of 35 U.S.C. 120 and 37 CFR 1.78, such as:
(A) The first application and the alleged continuation-in-part application must be filed with at least one common inventor.
(B) The continuation-in-part application must be "filed before the patenting or abandonment of or termination of proceedings on the first application or an application similarly entitled to the benefit of the filing date of the first application".
(C) The continuation-in-part application "contains or is amended to contain a specific reference to the earlier-filed application." (The specific reference must be submitted either in the first sentence(s) of the specification or an application data sheet (see 37 CFR 1.76 (b)(5)).)
The CIP patent applications are flexible that makes them an attractive option for several reasons. Following are the advantages of CIP patent applications:
1. A CIP patent application offers the inventor to add subject matter, unlike an ordinary continuation patent application. The inventor is able to, for example, modify existing disclosure, expand descriptions (e.g., to make sure that claims for an important feature are fully supported), or add paragraphs disclosing new subject matter.
2. A CIP patent application allows an inventor to economize filing fees by combining old and new disclosures in one patent application to potentially reduce costs. Also for future continuation patent applications, a CIP patent application can serve as a vehicle. Thus, without the need to file parallel applications, keeping a patent family alive for an inventor is easier by making incremental improvements and adding embodiments that might be sufficient to justify their patent application.
3. Third, claims that are limited to subject matter that the CIP patent application shares with the parent application inherit the priority date of the parent application. By contrast, claims that include subject matter that is first disclosed in the CIP patent application are entitled only to the filing date of the CIP patent application. A CIP patent application can have several priority dates; claims may extend back through “a continuous chain of copending nonprovisional patent applications'' that disclose the claimed subject matter. MPEP § 211.05(I)(B). As a result, claims in a CIP patent application can have a priority date that is more than one year (e.g., three years) before the filing of the CIP patent application.
A CIP patent application can be a convenient tool for the inventor to graft additional features onto a previously filed patent application. It may not, however, be the right tool for the job.
1. Shortened Patent Term: The standard patent term is of 20 years after the application’s earliest priority date. Also, the patent term of a CIP patent application that claims priority to a parent application, is limited to its parent application’s term. For example, if a parent application filed in 2005 has a CIP patent application filed in 2010 that claims priority to it, the parent application will expire in 2025, as well as the CIP patent application, as opposed to 2030, if the new disclosure had been filed in a standalone patent application. The shortened patent term applies to all claims of the CIP patent application, even those that are not entitled to the parent’s earlier priority date. An experienced patent attorney will be able to weigh the trade-off between an earlier priority date for some claims and a shortened patent term for all claims in a CIP patent application.
2. Claiming Any New Matter Brings Post-AIA Treatment: The earlier patent application (or chain of applications) to which a CIP patent application claims priority may well have been filed before the implementation of America Invents Act (AIA) changed the U.S. patent system in mid-March of 2013. For new patent applications filed since then, the AIA replaces the old first-to-invent system with a first-inventor-to-file system and expands what can qualify as prior art, among many other changes. However, a continuation patent application, not only inherits the parent application’s priority date but retains pre-AIA status if the parent application was pre-AIA but a CIP patent application, on the other hand, can easily lose that status. If even one claim in the CIP patent application includes subject matter introduced in the CIP patent application after the AIA implementation date, the entire patent application will become subject to post-AIA treatment, along with any future patent applications that claim priority to the CIP patent application.
3. Claiming Any New Matter Spoils Priority: It is unwise to think that a CIP patent application inherits the priority date of a parent application. A CIP patent application has individual claims that have their own priority dates and only a claim with all of its limitations fully supported by the disclosure of the parent application is entitled to the parent’s earlier priority date. All other claims are given the CIP patent application’s later priority date.
Filing a continuation or continuation-in-part type of patent application requires that the patent application must claim the benefit of the parent application, the patent application must be filed before the parent application is either approved or considered abandoned, and there must be at least one inventor listed under the new patent application that was listed under the original patent application. Meeting these requirements enables the inventors to apply modifications to the parent application without losing the valuable filing date in a system where "first to file" is the rule. Continuation and CIP patent applications are extremely helpful resources available to the inventors as it offers them the ability to modify the original patent application and keep the original filing date of a parent application. Filing continuation patent applications offer many advantages, however, blindly filing continuation patent applications will lead to an explosion in costs. Once the CIP patent application adopts the later filing date, the CIP patent application and its children become vulnerable to rejections based on a larger pool of prior art — including former parent applications in some cases. See, e.g.,Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1352 (Fed. Cir. 2012) (finding that “[d]ue to break in the chain of priority,” the “[parent] patent [was] prior art for some asserted claims”).
Shubham is a research analyst at Copperpod. He has a Bachelor's degree in Electronics and Commuication Engineering. His interest areas are the Internet of things (IoT), Networking, Semiconductors, Embedded System and Software.
Keywords: Patents, Patentability, Double Patenting, IP laws, USPTO, Patent Infringement, Claim Charts, IP Consulting, Invention, AIA
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