A continuation patent application is a separate later-filed patent application that relates to an earlier-filed patent application. The continuation patent application must be based on the specification shown in the earlier-filed patent application and must “build on” or add additional patentable claims. The continuation patent application is commonly called the “child” application and the original is called the “parent” application.

Timing is important with respect to continuation patent applications (“CPAs”). CPAs can be filed at any time after the parent application has been filed up until the date on which a patent is granted for the parent application. Once a patent has been granted/issued, the patent protections remain limited to the exact claims listed. In practice, CPAs are generally not filed until after the Notice of Allowance is issued for the parent application.

The practical effect of filing a CPA is that the parent application is “kept open” since the new claims must be evaluated. This gives the inventor time and opportunity to add claims and expand the scope of the patent protections afforded by the “family” of patents. More than one CPA can be filed which can allow a parent application (or its children) to remain “open” for a substantial length of time.

Why does this matter? Likely, an inventor’s competitors will immediately begin trying to design around the claims made in a patent application in order to produce and market a similar invention that does not infringe on the patent. But, as long as the parent application or a related CPA remains “open,” then it is possible for the original inventor to add claims that will cover the design-arounds that competitors are attempting. The priority date of any new added claims will be based on the date of the parent application. Thus, adding new claims via a CPA can cover competitors’ design-around efforts within the patent protections and, thus, help expand and maximize the scope of the patent protections afforded.

Likewise, the original inventor may continue working on the invention after the original patent application is filed. The original inventor may be making improvements and finding new embodiments, variations, manifestations, and applications for the invention. Filing a CPA will allow these new claims to be added to the patent protections. Thus, again, a CPA can help maximize the scope of the patent protections

From this we can see two of the most important reasons to include a continuation patent as part of your IP strategy:

• Maximizing the scope of your patent protections
• Keeping ahead of competitors’ design-around efforts

Cost effectiveness is the third reason to include a continuation patent as part of your IP strategy. Since a CPA is based on the specifications of the parent application, CPAs are easier and quicker to produce. This makes filing a CPA less expensive than filing a brand new patent application. The filing fees are also less for filing a CPA than for an original new patent application.

A couple of other reasons to include a continuation patent as part of your IP strategy include:

• Preventing a parent application from being prior art for a child patent application — once a patent is granted, it becomes prior art for any new patent applications; this potential problem is avoided with CPAs
• Higher chance of success — since a CPA is based on a parent application and is generally not filed until after the Notice of Allowance is issued, the CPA has a higher chance of being approved by the Patent Office for patent issuance

Contact Revision Legal

For more information or if you have an invention or design that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.

Continuation vs. Continuation-in-Part: Choosing the Right Vehicle

Inventors often confuse continuation patent applications with continuation-in-part (CIP) applications. A true continuation application must be based entirely on the specification of the parent application — it cannot add new subject matter — and all claims inherit the parent’s priority date without exception. A CIP application adds new subject matter not in the parent, but new claims that rely on the added subject matter receive only the CIP’s filing date — not the parent’s earlier date. This split priority date creates risk and complexity. For most situations involving improvements to an existing invention, filing a new independent application rather than a CIP avoids the complications that come with split priority dates and the risk of the parent becoming prior art against the new claims.

Terminal Disclaimer Considerations

When continuation applications claim substantially overlapping subject matter with the parent patent, the USPTO may issue an obviousness-type double patenting (ODP) rejection. The standard response is to file a terminal disclaimer, which ties the continuation patent’s expiration date to the parent patent’s expiration date. Terminal disclaimers create an important portfolio risk: if the parent patent is found invalid through IPR proceedings or litigation, the terminal disclaimer may render the continuation unenforceable as well, since the two patents are legally tied together. This reinforces the importance of having strong, well-supported parent claims before building a continuation chain.

Timing the Continuation Filing

A continuation must be filed while the parent application is still “co-pending” — before the parent either issues as a patent or is abandoned. In practice, patent attorneys file continuations when the Notice of Allowance is received, before the issue fee is paid and the patent issues. Many sophisticated patent owners file continuation applications as a matter of course whenever a parent receives a Notice of Allowance. This preserves the ability to add new claims in response to competitor product launches, design-around attempts, or new commercial embodiments — without losing the original priority date. Contact the patent attorneys at Revision Legal at 231-714-0100 to discuss whether a continuation strategy makes sense for your IP portfolio.