A continuation application is a refiling of a parent application that allows a patent applicant to pursue claims similar to the parent application. For example, the claims in the continuation application can:
- seek broader patent protection compared to the parent application; and
- reinforce any weakness in the claims of the parent application (i..e, go after design around).
The continuation application must be filed while the parent application is still pending. It must also include a claim of priority back to the parent application. By doing so, the priority date of the continuation application receives the benefit of the filing date of the parent application. The cost to prepare and file the continuation patent application is about $1,000 to $2,000 plus the cost to prepare the new claims.
How does a continuation application allow you to seek broader patent protection?
In the continuation application, you can submit any claim that’s supported by the specification. As such, if you received narrow claims through the parent application, you can submit broader claims in the continuation application as long as the broader claims are supported by the specification.
Let’s discuss how this situation might arise.
During the examination of a patent application, the examiner may allow a narrow claim (i.e., species) to mature into a patent. The inventor has the opportunity to accept or reject what the examiner has allowed. If the inventor accepts it, then the inventor is accepting a narrower claim than he or she would have wanted.
But, all hope for broader protection isn’t lost.
The inventor could accept the narrow claim and allow the narrow claim to mature as a patent. Simultaneously, the inventor could file the continuation application. In the continuation application, broader claims are submitted. In this way, you can have your patent and also fight for broader patent protection through the continuation application.
How does a continuation application allow you to submit claims against a design around?
The continuation application allows the inventor to submit claims against a design around. A design around is a competitor’s product that is not identical to your patented product but yet still avoids patent infringement. If this happens, your patent is essentially worthless. Fortunately, if you have a continuation application on file and still pending, you can submit claims that cover the design around. If allowed, then you can sue the competitor for patent infringement.
Let’s discuss how this situation would arise.
During examination of the parent application, the examiner allows a claim. You accept it and pay the issue fee resulting in a granted patent. A competitor inspects your patent and finds a weakness. If they change the product, it avoids infringement. At that point, you can’t sue them for patent infringement.
Fortunately, the continuation patent application must still be a pending patent application. If yes, the inventor can look at that design around and submit claims without that weakness. The goal is to use the continuation patent application as the means to submit new claims that cover the design around and get them into a patent. If the new claim is allowed, then the inventor can sue the competitor for patent infringement. Without the continuation application, the competitor has avoided patent infringement. The scope of patent protection of the original patent is limited to the granted patent.
Why would competitors try to design around your patent?
Competitors would prefer to use a design around than seek a license from patent owners. It is a much cheaper and simpler solution.
However, with the continuation, even if the granted patent only has narrow claims, the calculus as to whether the competitor can avoid patent infringement is much harder to determine. The inventor can resubmit claims directed to the competitor’s design around. Their counsel will let them know of the pending continuation patent application and the inventor’s option to resubmit new claims.
What’s the difference between a continuation, divisional and continuation-in-part patent application?
A continuation application is a refiling of a parent application that allows a patent applicant to pursue claims similar to the parent application.
A divisional patent application is also a refiling of the parent application but the claims are directed to other aspects of the invention.
A continuation-in-part (CIP) application is a refiling of the same specification as in the parent application but also includes information about additional features of the invention. The claims are directed to the additional features. A CIP does not need to be filed. Instead, the application can be filed as a stand-alone nonprovisional patent application. The benefit of filing the CIP application is that the patent applicant has only one patent family to manage. The downside to filing the CIP application is that the patent term of any patent maturing from the CIP application would be shortened.