CIP vs Continuation: What are the differences?
Both types of applications fall under the category of a continuing application. A continuing application is a separately filed application that is linked to a previously filed pending non-provisional application. By definition, the continuing application will have at least some of the original subject matter contained in the prior-filed application and at least one common inventor. What distinguishes a CIP from a straight continuation is whether new content is added. Let’s discuss the factors for filing a CIP vs. a continuation application.
What is a CIP application?
CIP stands for continuation-in-part which means some of the content has been disclosed in the prior-pending application. A CIP by definition contains new content which will get a later priority date, i.e., the filing date of the CIP. Therefore, a CIP will necessarily have different priority dates: earlier priority date(s) for the previously disclosed content, and a new priority date for the new subject matter.
What is a continuation application?
A continuation application does not add any new content. Practitioners sometimes refer to this application as a “straight continuation.” The drawings and written specification will generally be the same as those of the parent application. Only the claims will differ. However, the new claims in the continuation must find support in the original specification and drawings. Therefore, a continuation application maintains the priority date of the prior-filed application.
A divisional application is basically a type of continuation with claims directed to embodiments or inventions not elected in the parent application. Divisional applications typically arise as result of a Restriction Requirement in the parent application.
Which continuing application should you file?
If no new content is being added and you wish to pursue different claims on originally disclosed subject matter, then a straight continuation should be filed. This allows the new claims to maintain the earlier priority date and avoid recently filed applications by third parties from being cited against you as prior art.
Here are situations that may make a straight continuation application appropriate:
- narrower claims were allowed in the parent, and you wish to have the first patent granted sooner while reserving the option to pursue broader claims
- you elected certain claims in response to a restriction requirement, and now wish to pursue the non-elected claims in a divisional application
- claims have been allowed in the parent application, and you would like to keep pendency alive to pursue new claims against competitors and future design-around products
If new subject matter is being added (e.g., new features or a newer version of a product), then a CIP should be filed if you wish to keep the priority date of the parent.
What is the term of a continuing application?
The term of a continuing application is generally twenty years from the first non-provisional application to which priority is claimed. Therefore, it may be more advantageous to file a new standalone application in certain instances. The tradeoff is a fresh twenty-year term in exchange for sacrificing the priority date of the parent.
If the parent application has already been published, then the published parent application can be used as prior art against a standalone application.
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