Reasons for Filing a Continuing Application
Two key reasons may justify filing a continuing application that stems from a pending patent application:
- You want to pursue different claims than those in the pending application; or
- You have invented new subject matter (e.g., features, concepts, improvements, variations, processes, etc.) not disclosed in the pending application.
You should consider filing a continuation application if:
a) the patent examiner issued a Restriction Requirement forcing you to elect a subset of your original claims; or
b) you want to get a patent granted sooner while reserving the right to pursue broader claims.
A Restriction Requirement necessarily leads to non-elected claims, i.e., the claims you did not elect to pursue in the pending application. Filing a continuation application gives you the opportunity to pursue the non-elected claims in a separate patent application while maintaining the original filing date (“priority date”). This type of filing to pursue non-elected claims is also known as a “divisional application.”
Allowance of Narrower Claims
A continuation may be warranted if you’ve received an Office Action indicating that certain narrower claims are allowable. For example, say you filed a first patent application with an independent claim covering AB and a dependent claim that adds C. The examiner issues an Office Action rejecting the independent claim, but indicating that your dependent claim with a scope of ABC would be allowable if rewritten. You’re happy to take ABC, but you still want to patent AB alone. One strategy is to take the allowed claim (ABC) in the pending application, and file a continuation to pursue broader claims (AB). This results in an earlier grant of the first patent while you prosecute the broader claims in the continuation.
Use Hindsight to Your Advantage
Even if you’re content with the originally issued claims in the first patent, filing a continuing application gives you a second bite at the apple to cover design-around attempts by competitors. For example, suppose your first patent application is about to granted with an independent claim covering ABC. You’re happy with such a claim and can’t imagine anyone producing a competing product that omits at least one of A, B or C. A couple of years later, a competitor offers a product with features BCD. At that time, you will wish to had a pending continuation application so that you can pursue claims on BCD (assuming your specification supports element D), or simply on BC alone. Even if the proposed new claims in your continuing application might not be ultimately patentable, simply having a pending application with the possibility of covering the design-around competing products gives you significant leverage in pursuing licensing with your competitors.
When it comes to new inventions, you’ll want confer with your patent attorney on whether it makes sense to file a continuation-in-part (CIP) or a brand new standalone application.
The CIP gets the priority date of the parent application for the old subject matter only. This can be useful to the extent that the scope of any claims in your CIP overlap with the old subject matter since your parent patent application will not be used as prior art against you in a CIP filing.
If your new invention is significantly different than that covered in the pending application, it may make sense to file a brand new application that is not a continuing application. While the pending application might be cited as prior art against the claims in such a standalone filing, hopefully your new subject matter will be sufficiently unique to overcome such prior art rejections. Also, by not filing a continuing application, your new application will get the benefit of a full 20-year term from the filing date, as opposed to the shortened term of a CIP.
Keep in mind that a continuing application must be filed while the original application is still pending (e.g., not abandoned or granted).
When Can a Continuing Application Be Filed
A continuing application may be filed at anytime while the non-provisional application is pending (not abandoned or issued).
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