When to file a continuation application: What is the continuation deadline?

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.

Need to file a patent continuation application? Contact Vic at vlin@icaplaw.com or call (949) 223-9623 to request a flat rate cost estimate for filing your child application.

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.

Thinking of filing a continuation application?

Contact US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can quickly file a child continuing application while your parent application is pending.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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