Adding New Matter: Whether or Not to File CIP
The issue of how to apply for new subject matter that is new, but somewhat related to a pending patent filing can be somewhat tricky. An applicant has two options, and each has its own pros and cons.
Option 1: Stand-Alone Patent Application
Pros: Longer Term
Filing an independent patent application without a priority claim to the pending application has certain advantages. One of the biggest advantages of a stand-alone application is a longer term (namely, 20 years from the new filing date) compared to 20 years from the priority date of a parent application.
Cons: Prior Art Considerations
Disadvantages of a stand-alone application include the possibility of the published parent application being cited as prior art against against the new filing. Therefore, one critical factor in making this decision may be whether one year has already passed from the publication date of the pending (would-be parent) application. If less than a year has lapsed, the 1-year grace period under 35 USC § 102(B)(1) would disqualify the prior published application from being considered prior art.
Option 2: CIP
Pros: Earlier Priority Date for Original Subject Matter
The line between old and new subject matter can be blurry especially if the new content is closely related to the original disclosure. Borderline claim limitations that straddle both old and new subject matter can be written or amended to be more clearly supported by the original disclosure if an earlier priority date is desired (e.g., to pre-date potential prior art references). Obviously, flexibility of claim language might not be an option if the new subject matter is quite different from the original disclosure.
Cons: Earlier Patent Expiration
Disadvantages of a CIP include a shorter term calculated 20 years from the priority date of the patent chain. So if the priority date of the earliest non-provisional filing in the chain was five years ago, for example, then the term of a new CIP would be five years shorter than that of a stand-alone application.
Key Factors in Deciding Between CIP vs. Independent Application
Based on the above pros and cons, the following key factors emerge in making the difficult decision of filing a CIP versus a stand-alone application:
- Timing – i.e., whether one year has passed from the publication date of the potential parent application;
- Similarity of new subject matter to the original disclosure; and
- Desired length of term.
If less than a year has passed from the publication date and the new subject is quite different from the old, filing a stand-alone application might be preferable given the longer term. In fact, a decent argument can be made that as long as you’re within a year from the publication date of your pending application, any new matter should be filed as an independent application since the pending application cannot be used against you. However, other applications filed by third parties during that interim period may be cited as prior art against you which would lean towards filing a CIP if the new subject matter is quite similar to the old.
If the new subject matter is highly similar to the old and more than one year has passed from the publication date, a strong argument can be made for filing a CIP.
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