Do I Need to File a Continuation-in-Part Patent Application? Episode 59

Overview of Continuing Patent Applications

The last three episodes covered continuing patent applications. The first episode was a general overview, the second focused on divisional applications, and the last episode was about continuation applications. In this episode, I’ll discuss continuation-in-part applications (CIP).

Understanding Continuation-in-Part Applications

Let’s go back to the example from the last episode about the carrot peeler. In that example, you cannot claim new variations that were not discussed in your original application when filing a divisional or continuation application.

If you have new variations that were not included in the original application, you must file either a continuation-in-part application or a brand-new application that does not claim priority to anything but introduces new subject matter.

Continuation-in-part applications are called such because they are partially a continuation of your original application while also containing new subject matter. Unlike a standard continuation, which does not add anything new, a continuation-in-part includes both previously disclosed elements and new additions.

Example: Adding a Sound Wave Generator

Let’s say your original patent application covered a carrot peeler with a handle and a vibrating blade. A year later, you come up with a great new feature—a sound wave generator that makes the skin fall off even faster.

Since the sound wave generator was not described in your first application, you cannot simply write claims for it in a continuation or divisional application. Instead, you must file a brand-new application that essentially duplicates your first application but adds a description, illustrations, and claims for the sound wave generator.

In the Cross-Reference to Related Applications section, you must write:

"This application is a continuation-in-part of U.S. Application No. [X], filed on [X]."

Managing Your First Application

What happens to the first application that does not include the sound wave generator? You have a couple of choices:

• You can abandon it, or

• You can keep it pending to see if it gets approved, while simultaneously pursuing the continuation-in-part application.

Practically speaking, you would probably abandon the first application since your new application covers both the original peeler and the new sound wave generator.

Key Differences of a Continuation-in-Part Application

One major difference with a continuation-in-part application is that it only gets priority for the elements present in the original application. Any new subject matter introduced in the continuation-in-part does not benefit from the priority date of the first application.

For example, if you filed your original application on January 1, 2018, describing the handle and vibrating blade, and then on January 1, 2019, you filed a continuation-in-part application with the sound wave generator, the examiner cannot use prior art that appeared after January 1, 2018 to reject claims for the handle and vibrating blade. However, for any claims related to the sound wave generator, the examiner can cite prior art that was introduced between January 1, 2018, and January 1, 2019.

Patent Term Considerations

Another crucial issue with continuation-in-part applications is how the patent term is calculated.

The term of your patent is 20 years from the filing date of the earliest application. Even though a continuation-in-part application contains new subject matter, its patent term is still measured from the original application’s filing date.

If you filed your first application on January 1, 2018, and then filed your continuation-in-part application on January 1, 2019, your patent (if granted) will expire on January 1, 2038—which is 20 years from the first application’s filing date.

Had you simply filed a brand-new application instead of a continuation-in-part, your patent would expire 20 years from the filing date of the new application—which would be January 1, 2039.

Are Continuation-in-Part Applications a Good Idea?

A continuation-in-part application does not get the benefit of priority for the new subject matter it adds, so it does not provide a significant advantage in excluding prior art. Additionally, the patent term is effectively shortened since it is measured from the filing date of the first application, not the continuation-in-part application.

For these reasons, I believe continuation-in-part applications are often overused. In most cases, when an inventor is considering filing a continuation-in-part, they should instead file a brand-new application without claiming priority to the original application.

Why a Continuation-in-Part Can Be Problematic

Another reason continuation-in-part applications can be problematic is that your own original application can be used against you in certain situations.

Normally, prior art consists of publicly available information. However, once your patent application is published(usually 18 months after filing), it becomes public knowledge and can be used as prior art against your own future applications.

For example, suppose you file your first application on January 1, 2018. Eighteen months later, on July 1, 2019, your application is published. After this publication, you only have 12 months before your own application can be used as prior art against anything you file in the future.

This means that by July 1, 2020, if you try to file a continuation-in-part, your own published application can be used against you to show that your new invention is obvious. This is a major disadvantage.

If you file a brand-new application instead of a continuation-in-part, you may still face prior art challenges. However, if you successfully argue that your new invention is not obvious, your patent term will be 20 years from the new application’s filing date. With a continuation-in-part, you face the same prior art issues but with a shortened patent term.

Why a New Application Is Often the Better Choice

If you are considering filing a continuation-in-part application more than one year after your original application’s publication (which is 2.5 years after filing), you are likely better off filing a new application instead. Your original application will be used against you either way, and a new application gives you a longer patent term.

Even if it has not been 2.5 years yet, the potential minor benefit of a continuation-in-part usually does not outweigh the downside of having a shorter patent life.

There are some cases where a continuation-in-part might be the right choice, but these are rare and should be discussed with your patent attorney. Most of the time, filing a new, independent application is the better strategy.

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