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CIP Vs. New Stand-alone Patent Application: What Are Tradeoffs?
Your patent application has been submitted. But it takes years to patent an invention. You might develop numerous updates and improvements to your innovation in the due course of time. Even while your revisions might not be sufficient to warrant a new patent application, they might still be crucial to your invention. So, what would be the appropriate strategic step? Let’s find out!
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What is a Continuation-in-part (CIP) application?
A continuation-in-part (CIP) patent application bases its priority on a Prior Application A and supplements it with fresh information to form CIP Application B. If Prior Application A, submitted on January 1, 2020, reveals Features A, B, C, and D, for instance, a continuation-in-part (CIP) Application B, submitted on March 1, 2021, would likewise disclose Improvement Features A, B, C, and D as well as Additional Features E and F. Technically, any claims in CIP Application B that are exclusively focused on features A, B, C, and D would only be eligible for the March 1, 2021 filing date, whereas claims that contain any of features E and F would only be eligible for the January 1, 2020 filing date.
You can certainly duplicate your initial patent application, edit it, or add any new features to the back of the original application when resubmitting it to the USPTO. The previous patent application’s filing date does not, however, apply to the new subject matter. Rather, as of the CIP application’s filing date, the additional subject matter is considered to have been filed. The original application’s filing date for the new subject matter does not give you any advantages. The advantage of an earlier filing date might not seem significant, but it becomes important when you are up against a pertinent prior art reference.
CIP Application vs Stand Alone Application
Many people seeking patents wonder if they ought to submit a continuation-in-part (CIP) application or a new one. Cost savings (from patent prosecution and portfolio management) are the principal advantage of filing a continuation-in-part application, but there are possible drawbacks with file history estoppel, as stated above, that should be carefully examined before submitting a CIP application.
It is usually preferable to submit a new application rather than a CIP application if you have a sizable patent budget and the technology is important to your company. The loss of the earlier application’s prosecution history disclaimer and patent term can be avoided by filing a new application. In order to prevent the patent on the innovations from expiring too soon, you should additionally file a new application if the loss of patent term will be severe.
However, if you have a small patent budget and/or the technology is not important to your business, you should speak with your patent attorney about filing a CIP application to determine whether the cost benefits outweigh the potential loss of patent term and prosecution history disclaimer drawbacks.
The advantages and disadvantages of submitting a continuation-in-part application are briefly listed below.
Advantages of filing CIP
The advantage of submitting a CIP application is that it gives you the freedom to later assert the subject matter of your original application and benefit from the original patent application’s filing date. As an alternative, you can only add claims to the newly added subject matter that has the filing date of your later-filed CIP application. As a result, you save the money that would have been required to maintain two applications if you had submitted a separate new application for the additional subject matter.
Lower Costs of Patent Prosecution: The filing of a series of continuation applications to maintain at least one pending patent application for any significant product has various advantages (see reasons to file continuation patent applications). You can maintain prosecution for both the initial design and the modified design for your product by using a CIP application, which allows you to submit just one continuation application at a time. If you submitted a new application, you might need to continuously maintain two continuation applications, which raises the price of patent prosecution.
Reduced management costs for patents: Your patent portfolio is typically reduced with a CIP application to a single series of patent applications, which means there are fewer patents to handle and maintain through patent maintenance fees.
Save Money by Reserving the Right to Protect Original Design Elements:
There are situations when the client decides not to employ certain features from the original patent application in the upgraded end product. However, there are situations when a rival may not violate claims made about the original design but may violate claims made about a new application for the upgraded product.
A CIP application enables the client to maintain the original design features in the patent application rather than discarding the original patent application for the original design. This enables the client to later request patent protection for the original design aspects if they so want.
As was already said, the fundamental advantage of a continuation-in-part application is cost savings.
Enter in New Subject Matter:
A CIP application, unlike a patent continuation application, enables the applicant to include new subject matter to support critical aspects of the claim(s) or to enhance the initial subject matter.
Cons of CIP filing
The drawback of filing a CIP application as opposed to a distinct, independent application is that any patent that matures from the CIP application will have its term determined as of the filing date of your earlier-filed original patent application. The filing date of your later-filed CIP application is not taken into account. In a CIP, the patent period is, to put it simply, shortened.
Parent Application is used as Prior Art:
The fact that nothing prevents the disclosures in the parent application from being used as prior art for new claims in the CIP application if more than a year passes between the parent and the CIP application is another reason why CIP applications are no better than brand-new independent patent applications.
The CIP Claims May Be Limited by the Parent Application:
Another issue with CIP applications is that, typically, any justifications and assertions made in the parent application will be used to interpret the CIP application’s claim language in a limited manner. This doesn’t always matter. However, this possible drawback can be avoided by filing a second patent application.
The parent patent application(s) from which a CIP patent application asserts priority may have been submitted prior to the middle of March 2013 start of the America Invents Act (AIA). A CIP patent application, if filed after mid-March 2013, loses that status even if the parent is filed pre-AIA. A continuation patent application inherits the priority date of the parent application and maintains pre-AIA status if the parent application was pre-AIA.
A further reason to avoid submitting a CIP application is the fact that any patent that develops from a CIP application will typically be subject to the same arguments you make in the initial patent application. In Trading Technologies v. Open E Cry (August 30, 2013, Fed. Cir.), the patent in question pertained to trading software, namely a “static” feature. By extensively modifying the specification and removing the word “static” from the claim set, the patent holder attempted to remove the “static” limitation from the claims in a CIP application. Since the parent patent was only granted based on this, the district court determined that the claims of the invention that developed from the CIP application were restricted to a static feature.
While there is no ideal solution, by consulting carefully with your patent attorney you can come to the choice that is right for you at the time. You can either submit a new application or a continuation-in-part application when you have an improvement to an invention that was previously disclosed in a filed application.
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