What is a parent application?
A parent application is typically the first non-provisional patent application filed for an invention. It is possible that a parent application may disclose multiple inventions.
What is a child application?
A child patent application is filed while a parent application is still pending (i.e., not issued or abandoned). By linking a child to a parent through a priority claim, the child application benefits from the priority date of the parent(s).
What are the different types of child applications?
Also known as continuing applications, the various types of child applications include:
- continuation application – no new disclosure, just different and/or new claims finding support in the parent;
- divisional application – no new disclosure, just different claims finding support in the parent;
- continuation-in-part (CIP) application – new disclosure, and new claims finding support in the parent and/or the CIP.
Continuing applications typically contain the same disclosure as the parent (i.e., written description and figures), but different claims. A CIP contains new matter not disclosed in the parent app, leading to different priority dates: 1) an earlier priority date for subject matter disclosed in a parent app; and 2) the subsequent CIP filing date serving as the priority date for the additional disclosures contained therein.
What is a divisional application?
While divisionals and continuations are practically the same, a “divisional” technically refers to a child application containing originally filed claims that were not pursued in the parent. For example, a common scenario may involve a parent application that originally included both apparatus and method claims. In response to a Restriction Requirement where the patent examiner requires the applicant to pick one or the other, the applicant may elect apparatus claims in the parent, for example, and then file a divisional to pursue the non-elected method claims.
How can an applicant make strategic use of continuations?
Continuations can also play a significant role in a well-planned patent enforcement strategy. If a parent has been allowed, an applicant may want to consider filing a continuation application prior to the grant of the parent patent in order to capture attempts by competitors to design around the parent patent claims.
For example, if a parent patent issues with an independent claim covering ABC and a competitor introduces a new product with only AB (no C), filing a continuation with claims covering only AB (assuming such a claim is allowable over the prior art and supported by the specification) gives the patent owner a second bite at the apple to capture the design-around attempts.
Keeping pendency alive as insurance against future infringers
Even a strong patent with well drafted claims may be susceptible to design-arounds. Once competitors analyze and pick apart the patent claims, there’s no predicting how they might be able engineer around the claims to avoid infringement.
While it may be unclear how third parties will design around allowed claims, filing a continuation application with a placeholder claim gives the patent owner time to see how the competition reacts to the granted patent. The patent owner may then file a preliminary amendment to replace the placeholder claims with new claims that more effectively capture any design-around products.
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