CIP or new patent application?
When it comes to new subject matter that is related to a pending utility patent application, should you file a CIP (continuation-in-part) or new patent application without a priority claim? It’s not an easy decision, and each option comes with its own pros and cons.
Option 1: New Stand-Alone Patent Application
Pros of new patent application: longer term
Filing an independent patent application without a priority claim to a prior application has certain advantages. One of the biggest advantages of a stand-alone application is a longer term. A new utility patent application gets 20 years from the new filing date compared to 20 years from the priority date of a parent application.
Cons of new patent application: 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.
But wouldn’t the published application count as prior art against a CIP filed more than one year after the publication date? Yes, the publication would be eligible prior art. However, filing a CIP might give your patent attorney some wiggle room to draft claims in such a manner so as to find support in the priority application, thereby having a priority date preceding the publication date. In this sense, such claims would be more like those filed in a straight continuation, but the CIP provides flexibility to add new matter.
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 nonprovisional 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 or New Patent 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.
Keeping pendency alive
If the parent application has been, or is about to be, granted, a CIP makes more sense if there are no other pending child applications. Keeping pendency alive can be critical in bolstering patent rights for enforcement and litigation purposes.
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