There are a number of “continuing” patent applications including a continuation, a divisional, and a continuation-in-part. (See MPEP 201 for more information). But what is the difference???
What is a continuation patent application?
In the United States, after filing a first non-provisional patent application, it is possible to file a continuation patent application. A “continuation” or continuation patent application has the same specification and drawings as filed in the first non-provisional patent application (sometimes known as a “parent” application) and is given the benefit of the filing date of the non-provisional patent application.
A continuation patent application can be filed while the non-provisional patent application is pending. There are a number of reasons why an applicant may file a continuation patent application. As an example, the Applicant may desire patent claims that are broader or narrower than the claims in the non-provisional patent application. Alternatively, the Applicant may file claims to cover subject matter that is disclosed in the non-provisional patent application but was not claimed. However, the claims in a continuation cannot be the same as those in the parent non-provisional patent application.
In some cases, an Applicant may file the continuation application soon after filing the first non-provisional patent application, even before the first non-provisional patent application is examined. In other cases, the Applicant may have received a Notice of Allowance in the parent non-provisional patent application. The Applicant may decide to file a continuation when paying an issue fee to have the parent non-provisional patent application issue as a patent.
As noted above, there are a number of strategic reasons for filing a continuation application. An Applicant may continue to obtain additional patents to cover subject matter that is disclosed in the parent patent application. In other cases, an Applicant may learn of a possible infringer and may desire to draft claims that are disclosed in the original patent application to cover the possible infringer’s widget or gadget. In other cases, an Applicant may want to continue to build a patent portfolio to cover an important technology and build a moat around that technology. In other cases, an Applicant may desire to “keep an application open” in the patent family to continue to mine subject matter from the original application.
In conclusion, it is possible to file a second application, e.g., a continuation application, using the same the same specification and drawings as filed in the first non-provisional patent application. The only difference between the first non-provisional patent application and the continuation is found in the patent claims. In some cases, it may be advisable to file a number of continuation applications to continue to obtain patents that have different scope from a first non-provisional patent application.
In addition, there are other types of applications that are similar to continuation applications including divisional applications and continuation-in-part applications.
What is a divisional patent application?
A divisional application is similar to a continuation application in that it has the same specification and drawings as filed in the first non-provisional patent application. However, in some cases, a patent examiner may have examined the claims in the first non-provisional patent application and determined that some of the claims were related to a first invention and some of the claims were related to a second invention. The examiner may have asked the Applicant to pick one of the inventions to be examined. If the Applicant picks the first invention, the Applicant can later file a divisional application to obtain another patent on the second invention.
In some cases, an Applicant may file the divisional application while the first application is being examined. In other cases, the Applicant may have received a Notice of Allowance in the parent non-provisional patent application. The Applicant may decide to file the divisional when paying an issue fee to have the parent non-provisional patent application issue as a patent.
What is a continuation-in-part patent application?
In some instances, an Applicant may have developed new features or technology that may be related to what is disclosed in the first non-provisional patent application. A continuation-in-part can have some of the original specification and drawings as well as new subject matter. A continuation-in-part allows an Applicant to claim the new subject matter that is added to the continuation-in-part. However, any claims that are based on the new subject matter are not given the benefit of the original filing date, but rather the filing date of the continuation-in-part.
If you have questions about a continuation application, a divisional patent application, or a continuation-in-part patent application, please reach out to John Bednarz.
