Do I Need to File a Continuation Application? Episode 58

Overview of Continuation Applications

The last couple of episodes have been about continuing applications. The first episode covered continuation applications in general, and the last episode was about divisional applications.

The next type of continuing application is called a continuation application. A continuation application is useful for a few different reasons, but it is usually filed when you want to broaden the scope of your patent protection for something that was already allowed. This will make more sense with an example.

Example: Carrot Peeler Patent

Let’s say you filed a patent application for a new type of carrot peeler. Your peeler has a handle and a vibrating blade. You believe the vibrating blade is a novel feature, but you also include a version of your invention that has a sound wave generator, which you feel enhances the peeling process by making the skin fall off even faster.

The examiner reviews your application and determines that a peeler with a handle and a vibrating blade is not patentable because similar vibrating blades exist in other cutting tools. However, the examiner finds that your version with the sound wave generator is patentable and will allow your patent if you amend your claims to include the sound wave generator.

At this point, you could continue arguing with the examiner to try to get broader protection. However, the general strategy is to accept what the examiner allows first and fight for broader claims later.

So, in your first application, you amend the claims to satisfy the examiner’s requirement, adding the sound wave generator.

Then, you file a continuation application with broader claims that cover just the handle and vibrating blade—without the sound wave generator. Your first patent will be narrower, covering the sound wave generator version, but your continuation application keeps your broader claims alive for further examination.

This way, while your second application is still pending, you at least have a granted patent on something. If you had continued fighting for broader claims from the start, you might have ended up with nothing for a long time. It is generally better to have a patented invention, even if it is not as broad as you originally wanted, and then try to expand the scope later through continuation applications.

Other Reasons to File a Continuation Application

A continuation application is not only useful for broadening claims. Here are a few other important reasons why you might file one:

1. Keeping an Application Pending

   Sometimes, you want to keep a second application related to your first one in a pending state. This allows you to observe what competitors are doing. If they try to design around your existing patent, you can potentially rewrite your claims in the continuation application to cover their design variations and prevent them from bypassing your patent protection.

2. Covering Additional Inventions or Variations

   In many cases, you describe multiple inventions or variations in your first application but do not claim all of them. This may be because you are only allowed 20 claims without paying extra fees, and you did not want to incur additional costs at the time of filing. By filing a continuation application, you can claim those previously unclaimed inventions or variations without losing your priority date.

How to Properly File a Continuation Application

In the Cross-Reference to Related Applications section of your new application, you must include a sentence like:

"This application claims priority to and is a continuation of U.S. Patent Application No. [X], filed on [X]."

It is crucial to explicitly state what type of continuing application it is—whether it is a continuation, divisional, or continuation-in-part. You must also provide the original application number and filing date. You cannot simply state that your new application is "related to" a previous one; you must formally claim priority to benefit from the earlier filing date.

Limitations on Continuation Applications

One critical rule for both divisional and continuation applications is that you cannot add any new subject matter. This means that all material and claims must be fully supported by the original application’s written description. You cannot introduce new elements that were not originally discussed or illustrated in your first application.

Final Thoughts

That’s it for continuation applications. They are a powerful tool for expanding the scope of your patent protection and keeping options open for future claims.

I’m Adam Diament, and until next time—keep on inventing!