CONTINUATION, DIVISIONAL , CONTINUATION IN PART APPLICATIONS

Posted On :June 15th, 2010 By James Yang

Continuation, divisional and continuation-in-part (CIP) applications are related to the filing of the prior filed patent application by a claim of priority.  The prior filed patent application may be referred to as the parent or base application.  The continuation, divisional and CIP application may be referred to as the child application.

The simplified definition for a continuation, divisional and CIP application involves what is disclosed and what is claimed.  The continuation application is the same disclosure as the parent application with claims similar to the parent application.  The divisional application is the same disclosure as the parent application but with claims directed to different subject matter compared to the parent application.  (e.g., receiver v. transmitter).  The CIP application adds new subject matter to the parent application with claims directed to the new subject matter.

There may be different reasons for filing the child application.  One important reason for filing the child application is to maintain pendency of your application with the Patent Office.  This allows you to broaden or shift focus of your claims as you see how the market and your competitors react to your product.  When your parent application matures into a patent, the claims can be broaden but only to a limited degree for a limited period of time.  Your competitors will look at your patent and attempt to “design around” the claims.  If your competitors are successful in designing around your patent, then the issued patent may be less valuable.

The claims that can be submitted in the pending child patent application can be much broader than the claims in the issued patent.  In this manner, the child application may be used to reintroduced claims so as to cover your competitor’s redesigned product at least to the extent that there is commonality between your patent disclosure and your competitor’s new product.  Without the child patent application, the claims of your issued patent may be broadened but only to a limited degree for a limited period of time which may not be sufficient to cover your competitor’s redesigned product.

Other reasons for filing the child patent application may include continuing prosecution of the claims in the parent application, seeking claims directed to other subject matter in your patent application and adding slight modifications to your invention, etc.

Should you have any questions, please feel free to contact me at 949-433-0900 or James@OCPatentLawyer.com.

Share to Facebook
Share to Google Plus
1 Star2 Stars3 Stars4 Stars5 Stars (2 votes, average: 5.00 out of 5)
Print This Post Print This Post
Posted in: Definitions, Design around, Patent strategy

Leave a Reply