Continuation Patent Application Vs. Continuation-In-Part – Which Is Better And Why

Continuation Vs. Continuation-In-Part Patent Application – Which Is Better And Why: Continuation application, Continuation-in-parts Application, and Divisional Applications are all categorized under the “parent application” type. In this article, we will elaborate on Continuation application and Continuation-in-parts application to give you a better perspective about the advantages and disadvantages of filing the two.

Continuations-in-Part Application

A Continuation-in-part (CIP) Application is an application filed during the lifetime of an earlier filed nonprovisional application and includes some substantial portion, or all, of the earlier nonprovisional application and additional subject matter not disclosed in the earlier nonprovisional application. It is at times also referred to as an “add on” to an existing patent application. The continuation-in-part application claims the benefit of the prior nonprovisional application and should have at least one inventor in common with the previously filed non-provisional application.

When to File a CIP application

It should be noted that any claim of the CIP application that includes the newly added subject matter will have a priority date corresponding to the filing date of the CIP application. Therefore, CIP application should only be filed if the newly filed subject matter and corresponding claims cannot work without the subject matter disclosed in the earlier filed non-provisional application, and if filed as a separate application, then the separate application has chances of being rejected under obviousness based on the earlier filed non-provisional application. Also, while writing the CIP application, the writer should not include any independent claim which is solely based on the claims of the earlier non-provisional application to avoid the double patenting rejection. Therefore, it is advisable to have independent claims which includes at least one feature of the newly added subject matter.

Continuation Application

A continuation application is an application for the invention disclosed in a prior-filed co-pending nonprovisional application or an international application designating the United States. The disclosure presented in the continuation application must not include any new subject matter. Further, the continuation application must include at least one inventor named in the prior-filed application, and the continuation application must also claim the benefit of the prior-filed application.

When to File a Continuation Application

A continuation application can be filed before the patenting, abandonment, or termination of proceedings on an earlier application. An applicant may have a recourse to filing a continuation application in order to introduce a new set of claims and to establish a right to further examination by the Office. For example, continuation applications are used when an applicant wants to pursue additional claims of an earlier application. The continuation application may be useful when the applicant feels the earlier application does not have claims for all useful embodiments of the invention. Accordingly, the continuation application allows an applicant to keep a pendency of the patent family alive to pursue new claims against competitors and future design-around products.

Further, an applicant can file a continuation application if the examiner is ready to grant the patent application with narrow claims but has objections on granting the broader claims. In such a case, an applicant can accept a granted patent with narrow claims, and then pursue a continuation application for the broader claims. However, in such a case, the applicant must file the continuation application before paying the fee for grant of the earlier patent. Accordingly, the continuation application allows an applicant to keep a pendency of the patent family alive to pursue new claims against competitors and future design-around products.

-Yojit Bhugra and Pankaj Garg (Patent Drafting & Prosecution) and the Editorial Team

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