Using Continuation Applications Strategically

If you’re not familiar with patents, read this post first: What You Need to Know About Patents

Continuation applications can be used to bolster your patent portfolio and provide additional patent protection for your inventions, thereby increasing the value of your IP asset. With some careful planning, you can use continuation applications to turn your experiences with the patent office, in combination with your knowledge of the prior art, into multiple patents. Continuation applications can also be used to preserve your opportunity to pursue patent protection of certain aspects of your invention that become commercially important after your original patent application has issued as a patent. In addition, continuation applications offer a mechanism to synchronize your patent procurement with your funding and corporate strategies without sacrificing your patent rights.

What is a continuation application?

A patent application often describes multiple inventions or multiple aspects or embodiments of an invention. It is common that a patent issuing from an initial patent application (the “parent application”) may cover only a subset of the disclosed invention(s), aspects or embodiments. Accordingly, before the parent application issues as a patent, one or more further patent applications can be filed to allow the applicant to “continue” pursuing patent coverage for these other disclosed invention(s), aspects or embodiments.

Continuation applications have the same disclosure as the parent application. However, the scope of the claims in a continuation application must not be identical to (i.e., can be broader or narrower than) the claims in the parent patent. For example, claims in a continuation application can be claims that were cancelled from the parent application. Alternatively, you can pursue claims in a continuation application to cover products and/or services that are not claimed in, and appear in the market after, the parent application has issued as a patent. Both the references cited during the examination and the prosecution history of the initial patent application should be considered when drafting claims for a continuation application in order to expedite the examination.

Why should I file a continuation application?

Continuation applications can be filed to pursue additional patent protection that is not obtained in the parent patent. However, in a continuation application, you cannot claim something that is not disclosed in the parent application.

Moreover, continuation applications can also be used to preserve your chance to obtain patent protection for any invention(s), aspects or embodiments disclosed in the parent application that you do not want (or do not have the resource to pursue) now, but that may potentially be commercially valuable in the future.

When can I file a continuation application?

A continuation application can be filed at any point while at least one patent application in the family is pending.

You can file continuation applications in sequence (e.g., as successive generations of continuation applications), in parallel (e.g., as “sibling” continuation applications), or some combination thereof. As long as one case remains pending in the family, the timing of filing is up to you. This creates great flexibility both in terms of both expanding a patent portfolio quickly (e.g., in response to a competitor’s activities) and incurring cost (e.g., deferring filing and prosecution costs until funding is available). In addition, the incremental cost of preparing and filing a continuation application is relatively small compared to the original filing, which leverages your investment in the parent application.

How can I use a continuing application strategically?

Continuation applications can be used to expand a patent portfolio relatively quickly and inexpensively. They can also be used to generate interlocking patent protection that covers a market or technology more completely and is potentially less susceptible to invalidation in litigation. In addition, because the timing for filing continuation applications is very flexible (as long as at least one patent application is pending in the family), they can be filed based on product developments, market evolution, and/or your budget.

For example, one strategy for a start-up could be to file an initial patent application with claims that cover the first iteration of the product and are of relatively modest scope. Because the claims are modest in scope, they may quickly result in a patent issuance, which can be useful in fundraising, among other things. In addition, prosecution of the initial patent application will identify relevant prior art.

Thus, your knowledge of the prosecution history of the first patent application (including the cited prior art) can offer guidance on how to draft claims for and how to prosecute the continuation application.

Divisional Applications and Continuations-in-Part (CIPs)

In addition to continuation applications, the USPTO also permits two other types of continuing patent applications:

• A divisional application also has the same disclosure and priority date as the parent application (like a continuation application), but it includes claims that were filed with—and restricted from—the parent application. If the patent office decides that the parent application includes claims directed to multiple inventions, you may be required to choose claims directed to only one invention for the parent application, while claims directed to the other invention(s) can be file in one or more divisional applications.
• A continuation-in-part (CIP) includes additional disclosure not in the parent application. Claims in the CIP that are based solely on the disclosure from the parent application will be entitled to the priority date of the parent application, whereas any claims based on the new disclosure or a combination of the new and old disclosure will only be entitled to the filing date of the CIP application.