If you’re planning to file a patent, you’ll want to make sure your application is as strong as possible. As a patent attorney helping startups for over 20 years, I love delivering the good news of receiving a patent allowance from the USPTO. Having a patent granted is great news for the startup and its investors. Many founders think that they are done after getting a notice of allowance, yet they may leave something on the table if they do not pursue continuations from the original patent application. One reason is that the continuation with new claims keep the competition guessing where you are going with the next set of claims. Another reason is that a continuation is counted as a separate patent and can be a low-cost way to extend your patent count. Here’s how to get more patents from your current patent application:

Ten Reasons to File Continuation Patent Applications

Typically when your patent application has been allowed, your patent attorney will ask you whether you want to do a “continuation application.”  A “continuation” is simply a new application for patent that allows one to pursue additional claims on the same description or priority date as a pending “parent”.

Continuation applications can be a flexible tool that is useful in achieving many business goals.  Think of continuation applications as a hedge that keeps your Options Open.

Many people do not realize that continuation applications are completely new cases that do not affect the issuance of the allowed case (parent of the continuation), but share the priority date of the parent application and thus you can get the parent case to issue as a patent, and get the continuation case to issue as another patent, both with the same priority date!

In cases where you add new information to the parent text, that is called a “continuation-in-part” or CIP application which has two priority dates: a first priority date of the parent case for information copied from the parent case, and a second priority date for the new information added to the parent case.  

The CIP application allows a patent applicant add new subject matter in the parent application’s disclosure while maintaining the priority date for claims that are based on the original disclosure. CIP claims can be directed at the new or old subject matter, or a combination thereof.

Top 10 reasons why you should file a US continuation Patent Application as part of your Intellectual Property Strategy include:

  1. Cover New Competition Arising After Your Priority Date. One of the options you can do is to cover future competitive solutions as an offensive use. One can file a continuation that includes claims for a competitor’s product, provided it is detailed in the original parent application.
  2. Maximize IP valuation. This is another result of the “Keep Your Options Open.” If a patent is sold or licensed in future, maintaining a continuation can increase its value by allowing the buyer or licensee to continue their goals.
  3. Expand Scope of Allowed Claims. One option is to expand the scope by revisiting the prior art used against the allowed claims. Sometimes patent applications can be allowed with claims that provide only narrow coverage. An applicant might choose to immediately defend the invention by expediting claims or accepting an Examiner’s offer to allow only a portion of the pending claims. A continuation application can be useful in such situations to continue pursuing “broader protection.” You might file continuations to cover alternate embodiments or block design-arounds.
  4. Mine from Your Patent Disclosures. Only one invention is allowed by the USPTO. The USPTO may decide that patent applications can cover multiple inventions.  For applications with multiple claim sets/inventions, the USPTO might issue a “restrictions requirement” to divide up inventions and ask the applicant to choose one for examination. You can pursue the other inventions in a continuation request called a “divisional.”
  5. Mine from Your Patent Disclosures. Only one invention is allowed by the USPTO. The USPTO may decide that patent applications can cover multiple inventions.  For applications with multiple claim sets/inventions, the USPTO might issue a “restrictions requirement” to divide up inventions and ask the applicant to choose one for examination. You can pursue the other inventions in a continuation request called a “divisional.”
  6. Creating Uncertainty. In addition to establishing clear defensive and offensive positions and providing a deterrent for competitors, continuation applications (often with broad claims) can be used in order to create uncertainty about the final scope patent protection.
  7. Cover Evolving Technology. Technology is always changing but if your disclosure has all (or part) of the evolved tech, such may be claimed in the continuation. As long as the parent disclosure discussed elements of the evolving tech, a pending continuation can be used to draft claims for future advances.
  8. Law in Flux. The law, like technology, is constantly in flux.  Continuation applications can be used to address legal developments. For example, new claims that exploit or work around changes in the laws are possible.
  9. Litigation. Continuation applications can be used by patentees who are engaged in, contemplating or expecting litigation. A pending continuation application, for example, allows you to respond to the lawsuit’s result – such as drafting new claims to avoid previously discovered prior art.
  10. Defer (Decisions and Costs). Sometimes it is necessary to delay a decision or incur a cost. A continuation application can be used to delay prosecution. For example, it can be used as a way to “restart” the examination timeline by abandoning an application for patent and substituting a continuation with the same or related claims.

The best applicants see continuation applications as an important tool in patent prosecution and will draft their applications to include multiple positions, including fallback and defensive.

A continuation application or a CIP application must first be filed before the patent application for the parent is issued. The filing of the continuation request can be considered a purchase of an “options contract” that allows you to pursue additional claims in the future.

You don’t need to wait for your patent application to be granted – you can use continuations to respond to scientific or legal developments at any moment.

So how do you claim the early priority dates?  The PTO publishes the rules below:

35 U.S.C. 120  Benefit of earlier filing date in the United States.

An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.

No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director.

The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section.

The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section.

35 U.S.C. 119  Benefit of earlier filing date; right of priority

  • (1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application under section 111(a) or section 363 within the 12-month period was unintentional. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.
  • (2) A provisional application filed under section 111(b) may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) has been paid.
  • (3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day. For an application for patent filed under section 363 in a Receiving Office other than the Patent and Trademark Office, the 12-month and additional 2-month period set forth in this subsection shall be extended as provided under the treaty and Regulations as defined in section 351.

37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications

  • (a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. An applicant in a nonprovisional application, other than for a design patent, or an international application designating the United States may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.
    • (1) The nonprovisional application or international application designating the United States must be:
      • (i) Filed not later than twelve months after the date on which the provisional application was filed, subject to paragraph (b) of this section (a subsequent application); or
      • (ii) Entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a subsequent application that was filed within the period set forth in paragraph (a)(1)(i) of this section.
    • (2) Each prior-filed provisional application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(d) must have been paid for such provisional application within the time period set forth in § 1.53(g).
    • (3) Any nonprovisional application or international application designating the United States that claims the benefit of one or more prior-filed provisional applications must contain, or be amended to contain, a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number). If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)).
    • (4) The reference required by paragraph (a)(3) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application.