Key Takeaways

  • A patent continuation allows applicants to pursue different claims based on the original disclosure without adding new subject matter.
  • A continuation-in-part (CIP) adds new subject matter but results in a shorter patent term because it is measured from the CIP’s filing date.
  • CIP applications can have mixed priority dates, meaning older subject matter claims may benefit from the parent’s filing date, while new material only gets the CIP’s filing date.
  • Advantages of CIP filings include flexibility to update inventions and cost savings compared to filing a wholly new application.
  • Disadvantages include risks of losing priority for new material, a shorter patent term, and potential obviousness rejections.
  • Strategic considerations—such as timing, market readiness, and avoiding premature public disclosures—are critical when choosing between a continuation and a CIP.

The continuation in part patent term is calculated by the filing date of the continuation-in-part (CIP) application, rather than the priority date of the original application. While there are certain benefits to filing a CIP application, your patent term will be shorter than it would be when filing a normal nonprovisional patent application.

What Is a Continuation Application?

After you've filed a patent application, you might decide that you want to increase your future patent's scope. Unfortunately, if you file a new application, you will lose your initial filing date, which could potentially put your patent protections at risk. Luckily, you can maintain your filing date while increasing your application's scope by filing a continuation application.

If you choose to file one of these applications, you should know that you can only edit the claims contained in the original application. You cannot use a continuation application to introduce new claims. Your continuation application's disclosure section cannot include new information, which means you would need to leave out any developments you've made after filing your first application.

Using a continuation application can be a good way to respond to a patent examiner's request to change your initial application. For example, if the examiner states that your application will receive approval if you remove certain claims, you could switch these claims to your continuation applications. This will allow for approval of your original application while giving you the ability to fight for the rejected claims.

In some cases, you might need to file a continuation application if an Office Action sent by the United States Patent and Trademark Office has been finalized prematurely.

Key Differences Between Continuation and CIP

A standard patent continuation and a continuation-in-part (CIP) serve different purposes. A continuation allows applicants to adjust claims while relying on the original application’s filing date. It is often used to pursue broader or narrower claims after examination. A CIP, however, introduces new subject matter that was not disclosed in the parent application. Claims based on old subject matter retain the parent’s priority date, while claims based on new disclosures only benefit from the CIP’s filing date.

This difference directly impacts the patent term: continuation applications generally retain the same expiration date as the original, while CIP applications may shorten the effective patent life. Understanding these distinctions helps applicants decide which filing route aligns best with their invention strategy.

What Is Continuation-in-Part?

While you cannot add new material to a patent using a continuation application, you can introduce new material with a continuation-in-part application. The best time to file a CIP application is before publicly disclosing the parent application.

Thanks to new patent rules, you can disclose new information related to your invention with a CIP application while claiming the filing date of the parent application. While you can reveal new information in your CIP application, it's important to remember that your new claims must relate to the subject matter in the original application if you want to benefit from the original filing date.

If you want to claim the original filing date, you must explain why the parent application supports each new piece of information in the CIP application.

How Patent Terms Are Calculated in CIP Applications

In a continuation-in-part application, the patent term is calculated from the CIP filing date, not from the parent’s priority date. This means that although some claims may enjoy the benefit of the earlier filing date for novelty and prior art purposes, the overall patent expiration will be determined by when the CIP was filed.

For example, if the parent application was filed in 2020 and a CIP adding new subject matter was filed in 2023, the patent term is measured from 2023. Any claims that rely on the 2020 disclosure may still be protected against intervening prior art, but the CIP patent will expire sooner than if the new subject matter had been filed in a stand-alone application. This is a key strategic consideration for inventors who expect long commercialization timelines.

CIP Disadvantages

Although there are some distinct advantages to CIP applications, there are also drawbacks that might not be immediately clear, including:

  • A shorter patent term than the term awarded by a normal application.
  • The potential to lose your priority date.
  • The possible loss of obviousness.

Strategic Considerations for CIP Filings

Before filing a CIP, inventors should weigh timing and business goals. Important considerations include:

  • Market readiness: If an invention is still evolving, a CIP may capture improvements without starting from scratch.
  • Patent term trade-offs: Since the term is based on the CIP filing date, waiting too long to add improvements may shorten enforceable protection.
  • Obviousness risks: Adding new subject matter can expose applicants to obviousness rejections if the improvement seems like a logical step from the parent.
  • Public disclosures: Filing a CIP before any public disclosure of the improvements ensures that the new subject matter is still eligible for protection.

These factors highlight why careful planning is necessary when deciding between filing a continuation, a CIP, or a new application altogether.

CIP Advantages

Advantages of a CIP application that you need to understand if you want to patent an invention include:

  • You can add new developments related to your invention that were not available when you filed your patent application.
  • A CIP application is a much more flexible option for broadening your future patent's scope.
  • CIP applications, unlike normal continuation applications, do not limit the type of information you can reveal.

With a CIP application, you can complete several tasks:

  • Updating the disclosure in the parent application.
  • Expanding on the claims in the original application.
  • Adding new paragraphs to your application.

A CIP application is also a good way to reduce the cost of filing fees by using a single application for both new and old patent disclosures. Extending the life of a continuation application is another use of a CIP application. With your CIP application, you can make small changes to your original patent application instead of filing a completely new application for these claims.

Depending on your invention and the information you disclose, your CIP application might receive multiple priority dates. For instance, some of the claims you include in your application might have priority dates that are more than a year before your application's filing date. Filing a CIP application is the easiest way to protect new features of your invention after you've already filed a normal application.

Frequently Asked Questions

  1. How is a patent continuation different from a CIP?
    A continuation keeps the same disclosure as the parent and only changes claims, while a CIP introduces new subject matter with mixed priority dates.
  2. Does a CIP always shorten the patent term?
    Yes. The patent term is based on the CIP’s filing date, not the parent’s, which usually reduces the total enforceable time.
  3. Can I add new material to a continuation application?
    No. Continuations cannot include new disclosures; only CIPs allow new subject matter.
  4. Why would someone file a CIP instead of a new application?
    A CIP allows inventors to keep priority for old subject matter while incorporating new developments, often saving filing costs.
  5. What risks come with filing a CIP?
    Risks include losing priority for new subject matter, a shortened patent term, and greater potential for obviousness rejections.

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