Continuation Patent Application Vs. Continuation-In-Part
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Introduction
On deeply navigating in the complex world of patent applications we’ll get to know that patent is dealt in multiple types of applications, where every application can significantly impact the scope and strength of your patent rights. When we read Continuation patent application and Continuation-In- Part application it’s seems like interchangeable terms at first glance but they represent fundamentally different issues in patent prosecution process. As we know that world of patent is diverse with existence of various types of patent applications, for initiating invention’s journey towards securing a patent firstly an application is filed which initiates the examination procedure over invention and establishes priority over any subsequent application claims for the same invention but the process goes on and there are various types of applications which need to be filed to make patent strong enough. In this blog we will delve into the idea that what makes applications ‘Continuation patent application and Continuation-In- Part application’ unique, what distinct purpose do they serve.
There are three types of continuation applications: Continuation applications, divisional applications, and continuation- in-part applications, each serving distinct strategic purposes.
Continuation Patent Application
Basically, a continuation patent application allows the inventor of an invention to “modify” or “refine” his original claims as an additional claim in continuation of an original application and disclosure. This approach helps applicants in long run as it gives strong protection to their intellectual property without altering the original provisional application and substance of the invention. It is necessary for continuation applications to be in accordance to strict guidelines issued by United States and Trademark Office (USPTO). A continuation application cannot introduce any new claims which were not disclosed in the prior applications, the application must rely entirely on the specifications and information disclosed in the parent application. This application retains the filing date of the parent applications as this allows the inventor to have priority over the patent.
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Types of Continuation Applications
Basically, there are three main types of continuing patent applications: continuation application, divisional application, and continuation-in-part application. If we are to deeply understand these applications, we could gather that each application serves different purpose and offers different advantages to the applicant.
1. Continuation Application – This is filed to expand the scope of parent application by adding claims to it therefore this kind of application often relies on the same written description and disclosure as the parent application. It is to be noted that new claims of different subject matter cannot be added.
2. Divisional Application – Divisional application is filed in case examiner of parent application issues some kind of restrictions to the invention (subject matter); divisional application claims independent subject and new claims which were not part of prior application. This application retains the same filing date as of the parent application. This application is often filed in case the examiner finds that the parent application covers multiple, independent inventions.
3. Continuation-in-part (CIP) Application – CIP is a unique kind of application which offers an additional benefit to inventor by adding new material to an existing disclosure, this offers an inventor an advantage to include material which were not disclosed in the parent application. As the name suggest CIP is a “continuous” from the parent application but includes claims “in part” meaning thereby new information is included which were not a part of original parent application. In this regard, CIP is considered different from continuation application, which as described earlier does not include any new information with regard to invention. CIP in its unique way is important in cases where innovation is at its evolution stage.
CIP application enhances original invention by incorporating new developments or improvements this thereby helps applicant to cover all aspects of invention and decreasing chances of opposition. CIP is also considered useful when it comes to extending the scope of protection for your invention as it includes new material. This makes patent stronger and there could be less opposition from competitors.
One of the main advantages of CIP is that it allows applicant to maintain same priority date as it becomes crucial in the competitive world of patent where filing date can be game changer in grant of patent.
Difference between Continuation Patent Application and Continuation-In-Part Patent Applications.
Aspect | Continuation Patent Application | Continuation-In-Part Patent Applications. |
Definition | Continuation patent application as the name suggest continues the subject matter of a previously filed original application without adding new subject matter. | CIP is a unique application which gives several advantages to the applicant by adding new subject matter to original application. |
New Claims | It does not include new claims it solely relies on already existing claims. | Include new matter not included in the original patent application. |
Purpose | The main purpose behind this application is based on the same disclosure as the parent application | This is to expand the scope of disclosure by adding on additional claims |
Priority Date | Claims get the same priority date as the parent original application | Claims which are part of original application maintains the same priority date for the shared content. |
Reason to file | This kind application is useful when original application claims get rejected by the examiner. | It is useful in case of evolving invention as it incorporates improvements or additional claims which came into existence after the original filing came into existence after the original filing |
How to file | Applicant can file any time before the grant of patent
| Filing CIP involves several steps
|
The Impact of Filing Continuation Patent Application and Continuation-In-Part Patent Application
When it comes to impact of continuation patent application, it can have number of impacts on grant of patent; one of such is that filing a continuation patent application can be one of the crucial decisions for patent applicant as this application allows the applicant to pursue additional claims in furtherance of initial patent application; now there are some key reasons for filing this application which are as follows: -
• Additional Patent Protection - A continuation patent application allows applicant to add new claims that cover additional aspects of applicant’s invention this expands the scope of original invention. For instance, if original application is filed for a new type of car and later the invention was developed with inclusion of some innovation functions, technology; in such case a CPA is filed to include the new technology which enhances the value and functionality.
• Correct or Improve Claims – There is a possibility that the claims in the original patent application may be too narrow, ambiguous, or restricted. The CPA refines and allows for clarification while addressing the concerns which are raised in examination report.
• Maintain Priority Date – As we know priority date plays an important role in grant of patent and benefit of filing CPA is that it retains the original filing date of the parent application. This becomes the most important reason in case the invention relates to industries where there is competitive pressure and chances of similar invention is more. By filing Continuation application, applicant can preserve the priority date of the invention and its additional claims.
• Improve Patentability – There is a possibility that certain claims in the parent application were rejected due to prior art or for any other reasons. The claims in continuing application can be amended to distinguish the claims from the newly discovered prior art.
When it comes to impact of continuation- in- part patent, it can also have a number of impacts in the grant of patent. For instance, CIP could be seen to come up with additional features such as old song with new beats, in case of enhancing existing technologies CIP could include new developments in the patent application as in some cases filing new application is not beneficial as it could create confusion if original application has been recently filed. In addition to this it is important to note that a CIP can impact patent term as well, as we know patent is valid for 20 years from the date of filing therefore CIP should also be filed at the earliest if not much time is passed of original application this all should be kept in mind by applicant.
CIP offers multiple advantages but there could be multiple limitations and challenges; one of such is the “risk of double patenting” this happens when two patents are granted for same or similar invention which leads to rejection or multiple objections. In order to avoid this, it is important that new or additional claims in CIP must be on different lines from the original patent.
Conclusion
Continuation patent application and CIP can be effectively unutilized if understood in its entirety as these applications can significantly impact the grant of patent and may give significant benefits to patent holder. However, these applications can also come with its own set of challenges and consideration. The challenges can be avoided if application is strategically filed.
Author : BHUMI SHARMA, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.
References
1. https://www.uspto.gov/web/offices/pac/mpep/s201.html
2. (Uspto.gov, 1895)
3. https://www.mondaq.com/india/patent/475360/strategic-use-of-us-continuation-applications-in-building-patent-portfolio
4. https://pmc.ncbi.nlm.nih.gov/articles/PMC10394575/
5. (Charles R. Macedo, 2007)
6. https://nadkarnilaw.com/difference-between-a-continuation-patent-application-and-a-continuation-in-part-patent-application/
7. https://sierraiplaw.com/continuation-patent-applications/
8. Indian Patents Act 1970