Continuation Patent Application Vs. Continuation-In-Part
A parent application is the first or prior nonprovisional patent application filed for an invention. Continuing applications, also known as ‘child applications’ may be filed for a parent application while a parent application is still pending (i.e., not issued or abandoned).
Three types of continuing applications are:
- Continuation
- Continuation-In-Part (CIP)
- Divisional Application
After filing a patent non-provisional application, it takes a lot of time to get approved by the patent office. Meanwhile, the patent may come up with valuable updates and improvements in the original invention. These changes might be important to the invention.
The applicant can implement these changes by means of filing a Continuation or Continuation-In-Part (CIP) application for the patent. While the Continuation or Continuation-In-Part (CIP) applications are filed by the applicant deliberately, a divisional application is the result of the patent examiner’s restriction requirement which requires the applicant to file separate patent applications if the parent patent application discloses multiple inventions.
What parameters differentiate these applications from each other and how to decide filing of which patent application is more beneficial to the inventor is the key point of discussion.
In the case of the Continuation application, the application allows for modification of the claims only while specifications remain the same. A Continuation-in-part (CIP) Application allows the applicant to add new content to the specifications too.
It is like an add-on to the existing application matter which was initially submitted. A divisional application is generally used by the applicant in cases where the parent application describes more than one invention.
Depending on the requirement of the applicant, it may be better to go for a continuation application instead of CIP in certain cases or vice versa in some exceptional cases. To know everything in more detail please follow the sections presented below:
Table of Contents
Continuation Application
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.”
A continuation application can be used as a flexible tool to pursue additional claims to the parent patent application while the specification remains the same. The newly added claims must support the specifications submitted in the earlier patent application.
The continuation application can be filed at any time before granting or abandonment of an earlier nonprovisional patent application. The continuation application must name at least one of the inventors named in the parent application.
A Continuation application is helpful when the parent application does not claim all the possible aspects of an invention. Also, a continuation application may be helpful when the applicant wants to target a design around the claim of the parent application which is supported by the parent application description.
Benefits of Continuation Application
With a Continuation Application, an inventor may increase the scope of his application without having to file an entirely new application. Sometimes the applicant has drafted narrow claims in the parent application for quick granting. In this process, claims can be broadened using a continuation application.
A continuation patent application may provide scope for drafting claims to target competitor’s product features or any future design-around products if supporting matter is present in the original parent patent application.
Patent continuation application becomes useful when the examiner issued a mixture of allowance and rejection for the set of claims. For example, if the examiner agreed to approve the patent application if claims A, B, and C are removed, It is better to move claims A, B, and C from the examined application into a Continuation in order to get more time for fighting the rejected claims.
Sometimes to buy out some more time for examination the applicant can use a continuation application.
Drawbacks of Continuation Application
Filing a continuation application can incur additional costs like filing, issuance, maintenance fees.
A Continuation application will expire with the parent patent as the priority date remains the same.
During the prosecution of a continuation application, the applicant is not allowed to make changes in patent specification. If the inventor needs to supplement the disclosure of the earlier parent application, he must file a continuation-in-part application.
Prosecution & granting time for the patent application increases when multiple continuation patent applications are encountered.
Continuation-In-Part (CIP) Application
Limitations of continuation application that stops applicant to modify specification can be overcome by filing a CIP application. CIP is also known as an ‘add-on’ application and it can be filed during the lifetime of an earlier nonprovisional patent application, while the name of at least one of the inventors named in the patent application must be included.
Using a CIP application new matter is added which was not disclosed in the original patent application. This is an approach that allows an inventor to enhance the original design. It is a key point to note that claims in the CIP that concern the subject matter disclosed in the parent application are entitled to the filing date of the parent application.
However, claims that are related to the newly added subject matter are only entitled to the filing date of the CIP application. For example, if the parent application filed on March 5, 2017, discloses features A, B, and C, a continuation-in-part (CIP) application filed on May 5, 2018, also discloses features A, B, and C plus additional features P1 and Q1.
In this case, the claims citing features P1 and Q1 features are entitled to the filing date of the CIP application (i.e. May 5, 2018). CIP should be filed only when the new subject matter and corresponding claims cannot be enabled with the subject matter disclosed in the prior non-provisional application.
Benefits of Continuation-In-Part (CIP) Application
Unlike a patent continuation application, a CIP application allows the applicant to add new subject matter in order to support important features of the claim(s) or to further improve the original subject matter.
In place of filing a new application, the CIP application allows you to streamline your patent prosecution to one family of patent applications. Hence the cost of prosecution & managing two separate families of patent applications is reduced.
Using the CIP application patent portfolio is concentrated into one series of patent applications; consequently, a smaller number of patents need to be managed and the maintenance fee is also reduced.
Drawbacks of Continuation-In-Part (CIP) Application
Patent term of a CIP patent application is limited to its parent application’s term. For example, consider a case where a parent application is filed in 2010 and has a CIP patent application filed in 2015. Considering a 20 years patent term, the parent application will expire in 2030. The CIP patent application will also expire along with the parent application in 2030. Whereas if instead of filing the CIP, the applicant had filed a separate application in 2015, the application would have expired in 2035.
A CIP application may be subject to any prosecution history disclaimers made in the parent application which may narrow the scope of patent protection in the CIP application. If the budget is not a constraint and technology is valuable to an entity, it is advisable to file a new application separately instead of a CIP application. Filing a new application prevents the loss of patent term and prosecution history disclaimer from the prior application.
Generally, any arguments and statements drafted in the parent application will be used to narrowly interpret the claim language in the CIP application. Filing a separate patent application can avoid this potential downside.
If there is intervention of more than a year between the parent and the CIP application, nothing prevents the disclosures in the parent application from being used as prior art for new claims in the CIP application. To understand in more detail please refer the example of one court stated the issue: “… the CIP application and its children become vulnerable to rejections based on a larger pool of prior art — including former parent applications in some cases.” See Natural Alternatives Intern’l, Inc. v. Iancu, 904 F. 3d 1375 (Fed. Cir. 2018); see also Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344 (Fed. Cir. 2012). When this happens, the greatest vulnerability is rejection on the basis of obviousness.
The parent patent application(s) to which a CIP patent application claims priority may have been filed before the implementation of America Invents Act (AIA) in mid-March of 2013. A continuation patent application inherits the parent application’s priority date and retains pre-AIA status if the parent application was pre-AIA but a CIP patent application if filed after mid-March of 2013, loses that status even if the parent is filed pre-AIA.
Divisional patent application
This type of application is usually a requirement made by the examiner during an office action. A patent application requires to have “unity of invention”. The requirement serves to preclude the option of filing one patent application for several inventions while paying only one set of fees.
A divisional application is filed by the applicant in cases where the parent application describes more than one invention. The applicant is required to split the parent application into one or more divisional applications each claiming only a single invention (or “a group of inventions so linked as to form a single general inventive concept,” according to MPEP).
A divisional application can only claim the subject matter which was disclosed in the parent application and would retain the parent’s filing date.
Sanket Thakur
