Continuation practice involves the filing of continuation applications during the pendency of a patent application (called the “parent” application). Such continuation applications can go by other names depending on the type of continuation being applied for, such as a divisional or continuation-in-part (CIP) application. In contrast, an RCE (request for continued examination) is not considered a continuation application, but is merely a request for the prosecution of a pending application to be reopened as an alternative to filing an Appeal.
A divisional application claims a distinct or independent invention “carved out” of the parent application. A divisional will have new and separate claims from the parent application; however, it is important to note that the basis of support relies on the same disclosure as the parent application.
The decision to file a divisional can also arise in situations in which an Examiner issues a restriction requirement during prosecution of the parent application. Also referred as a “unity of invention” requirement, such restrictions oblige the applicant to elect one of the identified “species” or groups (typically identified by associating sets drawings or claims) in the examiner’s Office Action for continuing prosecution of the parent application.
In the event that the applicant wants to pursue any non-elected species or claims, the applicant can do so by filing a divisional application. Divisional applications can be filed in various jurisdictions including the USPTO, EPO, and JPO.
In contrast to divisionals, a CIP application allows an applicant to extend the basis of support for advancing new claims by adding new subject matter. Upon examination, in deciding how to structure a prior-art search, the Examiner will apply the filing date of the parent application for subject matter contained in the original disclosure of the parent, and the filing date of the CIP for any new subject matter. CIP applications can only be filed with the USPTO.
Continuation applications are a powerful strategic tool in one’s filing strategy for developing a high-value patent portfolio. In particular, CIP applications can be used to continue the prosecution of key claims while broadening the scope of protection. Such practice enables one to adapt the scope of the IP to changes in technology.
Attempts have been made to introduce regulations in the USPTO to limit such continuation practice. However, proposed changes to the USPTO’s continuation rules have been withdrawn due to a backlash from corporate and independent stakeholders alike. While some argue that such continuation practice allows the patent system to be abused, curtailing such practice is seen by others as a violation of patent law, and inconsistent with current regulations.
FlashPoint IP factors these wide-ranging aspects into the process of securing patent protection, whether in searching the prior art, drafting patent applications, selecting how and where to file, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP. Contact us to discuss your options regarding IP positioning and strategy, and how best to secure your rights.
