The term "continuing application" is a common term in intellectual
property, yet it is often misunderstood and incorrectly applied. This
is primarily due to the number of changes in the rules governing
continuation practice that have occurred in the past decade.
Most patent applications are filed as "original" applications. In
other words, they establish their own filing date and do not have an
effective filing date based upon another previously filed application.
If an "original" application is then used to establish an effective
filing date of a later filed application, it becomes known as a parent
application. Such later filed applications may take many forms.
Continuation Applications
First, and perhaps the most straight-forward continuing application,
is a continuation application. Continuation applications utilize the
parent application's disclosure and claim the benefit of the parent
application. In order for a continuation application to be granted the
filing date of the parent application it must: (1) be filed while the
parent application is pending, (2) have at least one inventor in
common with the parent application, and (3) have claims that are fully
supported by the parent application's disclosure. The term "pending"
in requirement (1) above is the cause of great confusion and deserves
special attention. The term "pending" does not mean that the
"original" application must still be pending. It simply requires that
any application in the parent application and continuation application
relationship is still pending.
Divisional Applications
A divisional application is a second type of continuing application
and is a specific type of continuation application. The Patent Office
commonly finds that an application impermissibly claims more than one
invention. Upon this finding, the Patent Office issues a Restriction
Requirement that requires the applicant to choose one of the disclosed
inventions for prosecution and to remove the claims directed to the
other invention. The applicant may then file a divisional application
at any time during which the parent application is pending wherein the
claims that were removed from the original application are
resubmitted.
Continuation-In-Part (CIP) Applications
The third available continuing application, known as a CIP
application, contains the parent application's disclosure PLUS
additional disclosure. Claims that are supported by the parent
application's disclosure may obtain an effective filing date of the
parent application, however claims that are supported by the
additional disclosure may not obtain the effective filing date.
Continuing Prosecution Applications (CPA's) & Requests for
Continued Examination (RCE's)
In addition to the three types of continuing applications previously
described, there is a second mechanism available for filing continuing
applications that is known as the CPA. The CPA is currently not of
much significance because it is being phased out and may not be used
with applications, other than design patent applications, that were
filed after May 28, 2000. The RCE is the replacement for the CPA. The
RCE may be used with any application filed on or after June 8, 1995,
except design patent applications. The purpose of both the CPA and RCE
applications is to allow an applicant to file an application to keep
the prosecution of a parent application alive after it has received a
final rejection from the Patent Office. These applications stay with
the same Examiner that was reviewing the parent application and keep
the same serial number, yet the final rejection of the parent
application is removed. CPA's and RCE's can be thought of as simply
paying an additional fee to buy another full examination of an
application.
So What Is The Benefit?
Continuation practice is all about strategy, a strategy that should be
developed in close cooperation between the applicant and their patent
attorney. In developing a strategy for a family of related inventions,
one must consider the advantages and disadvantages of obtaining an
earlier effective filing date. Ask yourself, what am I gaining by
filing a continuing application rather than an original application?
In answering this question, it is necessary to keep in mind that a
patent term is 20 years from the filing date of the earliest filed
parent application. Therefore, filing a continuing application, rather
than an original application, has the potential to reduce the life of
a subsequently issued patent. However, a continuing application may
need the effective filing date of the parent application to overcome
recent prior art or other statutory bars.
Another consideration is the potential risk of others designing around
your patent. If this is a substantial risk, it may be worth using
continuation applications to ensure the disclosure of the original
application is always pending. The benefit is that if a competing
product has designed around the original patent, the claims of the
pending continuation application may be modified so as to ensure
infringement if a patent should issue. Of course, the modified claims
must be supported by the disclosure.
A further consideration is that of commercialization. Patent
applications are typically written as broadly as possible and for this
reason are met with resistance in the Patent Office. The Patent Office
will often allow the narrow claims of an application while rejecting
the broader claims. When an applicant has a particular product with
immediate commercial potential, it may be wise to delete the broad
claims during prosecution to obtain a patent on the narrow claims
covering the specific product. The broader claims can be filed in a
separate continuation application, with the commercial product being
protected in the meantime.
Each of the applications described herein has unique procedural
requirements and deadlines that are beyond the scope of the present
article and should be discussed with a patent attorney.
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