Continuation and Continuation-in-Part Applications: What's the Story?

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Continuation Applications

A continuation patent application may keep an original patent application alive after the patent examiner has issued a final office action rejecting one or more of the claims. A “continuation application” must be filed within three months after a patent application is rejected, unless an extension is obtained by filing an extension application and paying the appropriate fee.

A continuation application requires a new fee and new claims and will receive a new serial number and filing date. However, in the event an interference (a conflict between two pending applications) occurs, and for purposes of determining the existence of prior art, the inventor will be entitled to the benefit of the original filing date. In other words, if someone else comes up with the same invention between an applicant’s original filing date and the continuation application filing date, the original filing date will control and the corresponding invention will be given priority.

The term “continuation application” is often used interchangeably with a “file wrapper continuing application (FWC).”

Continuation-in-Part Applicaiton

A continuation-in-part application (CIP) is an application filed subsequent to an original application which includes new material not covered in the original application. A CIP provides a way for an inventor to supplement an earlier patent application with new matter to cover improvements made since the first application was filed. The CIP receives the same filing date for matter that it and the original (or parent) application have in common. However, any claim in the CIP that covers the new subject matter is treated as being filed as of the date of the CIP.

Note that a continuation-in-part application should be distinguished from a continuation application, where the applicant reformulates his or her claims after a rejection by the U.S. Patent and Trademark Office.

The Potential Dilemma

A continuation is supposed to replace the parent application. A parent and its continuation are supposed to cover the same invention and generally both do not issue (patent lingo for the official grant of the patent).

The problem is that sometimes the USPTO issues the parent and a continuation. They usually have somewhat different claims and the continuation usually expires the same day as its parent application, so you can make, use, sell the invention covered by its claims with impunity once the continuation expires. A "terminal disclaimer" is supposed to be filed in the continuation so it will not last beyond the expiration of the parent. If this situation occurs, you'll need to consider infringement of the continuation separately from its parent case. That is, one does not affect the other.

Summing up, the continuation may have a terminal disclaimer and may or may not cover the same invention as the parent. Both may be invalid for double patenting if a terminal disclaimer was not filed. Because this is such a complicated matter, you may need the help of a patent attorney to sort through it.