What are Continuing Patent Applications. Episode 56

Overview of Continuing Patent Applications

This episode is about continuing patent applications. There are different kinds of continuing applications, and at first, I planned to discuss all of them in one episode. However, as I started preparing, I realized that there was too much information to cover within the usual 5- to 15-minute episode length. So, this episode will provide a general overview of the purpose of continuing applications.

For the most part, continuing applications are filed to cover new aspects or improvements of an invention related to an earlier application.

Types of Continuing Applications

There are four or five different types of continuing applications, depending on how you define them. These include divisional applications, continuation applications, and continuation-in-part applications.

• Divisional Application: A divisional application is filed when you were required to divide your original application because the examiner determined that it contained more than one invention.

• Continuation Application: A continuation application is filed when you want to cover aspects of your invention that were not allowed in your first patent application. Usually, this is done to broaden your patent rights, though there are other reasons as well. I will discuss these in detail in a separate episode.

• Continuation-in-Part (CIP) Application: This is similar to a continuation application, but it includes new subject matter. For example, if you filed an application and later realized that you forgot to describe or illustrate an important variation of your invention, you might not be able to get patent protection for that variation in your first application. Since you cannot add new matter to an already filed application, you would need to file a CIP application.

These are the three main types of continuing patent applications: divisional, continuation, and continuation-in-part.

Reissue Applications

Another type of continuing application is a reissue application, which is slightly different. These can be complex, but essentially, they are filed when you realize there was a mistake in your issued patent.

There are many rules regarding what can and cannot be corrected in a reissue application. In some cases, you can broaden your patent, while in others, you may only be allowed to make certain corrections. I will cover these rules in detail in a future episode.

If your reissue patent is granted, it replaces your original patent. However, if it is not granted, your original patent remains enforceable.

Continued Prosecution Applications (CPAs)

Another type of continuing application applies only to design patents. These are called continued prosecution applications (CPAs). Note that CPA does not stand for "continuing patent application." Even though the initials are similar, a CPA is different from a general continuing patent application.

A CPA is filed when you want the examiner to continue examining your design patent application after receiving a final rejection. Technically, it receives a new application number, but it is not really a new application. Instead, it is a continuation of the arguments you made in your original application.

For utility patents, the equivalent of a CPA is called a request for continued examination (RCE). However, for design applications, the correct term is continued prosecution application (CPA).

Why File a Continuing Patent Application?

All the types of continuing applications discussed here are related to your original patent application. But why would you need them? Why not just file a brand-new application without mentioning the earlier one?

The main reason almost always comes down to securing an earlier filing date. There are some complexities regarding filing dates for continuation-in-part applications, but for most continuing applications, filing one allows you to retain the original application’s filing date.

For example, suppose you filed your first application on January 1, 2018. Then, one year later, on January 1, 2019, you file a continuation application. If filed properly, the continuation application is treated as if it had been filed on January 1, 2018.

This is crucial because if you had filed a completely new application instead of a continuation, any new developments or competing products that emerged between January 1, 2018, and January 1, 2019, could be used against your application. However, since you filed a continuation, only prior art that existed before January 1, 2018, can be used against you.

Final Thoughts

I will go into more detail in future episodes about the different types of continuing applications and the specific situations in which they are useful. For now, just remember that if you want patent protection for something similar to what was described or claimed in your first application, you may need to file some type of continuing patent application.

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