When it comes to your patent application, you may have seen the terms “CIP,” “Continuation,” and “Divisional,” but what do they mean? How are they relevant to the patent process? Let’s review these terms and when you should consider employing one of these options.
A “continuation” is a non-provisional patent application that claims priority to a previously filed non-provisional patent application (aka, a “parent application”). A continuation application must be filed during the “pendency of the parent application,” meaning, the continuation application must be filed before the parent application issues as a patent or is deemed abandoned.
Additionally, the continuation application must not contain any “new matter,” that is, the continuation application must use the same specifications and drawings as its parent application, but it can have new and different claims from the parent application.
An inventor might consider filing a continuation application when some claims are allowed but the broadest claims are rejected. In this instance, an inventor could amend the application so that only the allowed claims remain pending. The allowed claims will now issue in due course. But as long as the inventor files a continuation application before the allowed claims issue, the inventor can pursue the broader, rejected claims in a continuation application. This type of strategy enables the inventor to simultaneously get a patent issued and pursue broader claims.
A “continuation-in-part” (CIP) is a continuation application, except it contains new specifications and/or new drawings, in addition to new claims. Like a continuation application, a CIP must be filed during the pendency of the parent application.
A CIP is a valuable tool for capturing improvements to an invention. It is common for an inventor to modify an invention after filing a patent application. In fact, some modifications are so dramatic that the parent application no longer covers the improvements. In this case, an inventor can file a CIP and supplement the originally filed application with the changes. Of course, the newly disclosed specifications only receive the filing date of the CIP, but any CIP disclosure that was in the parent application retains the effective filing date of the parent application.
Caveat: Invention improvements are not required to be filed in a CIP application. The improvements can be filed in a separate, unrelated patent application. The benefit of filing a separate, non-CIP application is that the 20-year patent life is calculated from the new application, whereas the 20-year life of a CIP is calculated by the effective filing date of the parent application. In some cases, this can be a major difference in patent life. The downside to filing an unrelated (non-CIP) application for improvements is that the parent application will be considered prior art in relation to the new application. Thus, unless filed as a CIP, the claimed improvements must be novel and non-obvious over the inventor’s prior work.
A “divisional” is a non-provisional patent application that claims priority to a parent application. Like conditionals and CIPs, it must be filed during the pendency of the parent application, but it is different from these applications because everything in the divisional application must be in the parent application: the specifications, drawings, and claims.
Typically, a divisional application is used when the parent application discloses more than one invention. For example, a parent application might disclose and claim a chair and a rocking chair. In the first office action, the examiner will likely require the applicant to restrict the parent application to one invention (i.e., either the chair or the rocking chair). If the applicant elects to restrict the parent application to the chair, the applicant can divide out the remaining claims to the rocking chair in a divisional application.
When to File a Continuation, CIP, or Divisional Application
While these three types of patent applications can be filed anytime during the pendency of the parent application, the most common time to consider these options is when the parent application gets “allowed.” When a patent application gets “allowed,” the United States Patent and Trademark Office (USPTO) has approved the patent, but it will not issue it until the issue fees are paid. Often, there is a gap of at least three months between allowance and issuance. During this gap, an applicant would be wise to consider whether to file a continuation, CIP, or divisional application.
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