When must a continuation application be filed?
Known as a child application, a continuation must be filed while the parent application is still pending. A pending patent application is one that has not been abandoned or granted. In some cases, there may be no exact deadline for when a continuation must be filed because the parent application may be pending for a long time. For example, you may be waiting for a first Office Action which can take a couple of years. In other cases, the urgency may be high as the parent application is about to issue.
Timing is critical here. There is no second chance after a patent is granted. You can file a standalone patent application with new matter, but you will not be able to file a continuation after the parent application has issued.
When should you file a continuation when your patent application is allowed?
A Notice of Allowance sets a 3-month deadline for paying the issue fee. Once the issue fee is paid, your patent will grant in roughly one month. Consider paying the issue fee later to give yourself more time to decide whether or not to file a continuation.
To err on the side of caution, we prefer filing the continuing application before paying the issue fee if possible. Sometimes, you will not have that luxury if the issue fee deadline is rapidly approaching. During those times when an issue fee payment must be made to meet the deadline, consider filing the continuation within one or two weeks of the payment date if possible.
After payment of the issue fee, the USPTO will send an Issue Notification setting forth the exact date on which the patent will be granted, which will always be a Tuesday. Unless it’s a holiday, the Monday before the issue date will typically be the last day to file a continuation.
Is it safe to pay the issue fee before filing a continuing application? It depends. We don’t blame clients for wanting their patents granted as soon as possible. In fact, we typically share that desire to get the patent right away. To minimize risk in those situations, try to get the continuation application filed within one or two weeks of the issue fee payment if possible.
When should you file a continuing application when an Office Action is outstanding?
At times, it may make sense to file a continuing application in lieu of responding to an Office Action. In those circumstances, you can file a continuing application within the 3-month deadline of a substantive Office Action without having to pay any extension fees. An extension fee will need to be paid in the parent application if you plan to file a continuing during the extended period calculated from the Office Action date.