A continuation patent application (i.e., child application) is a refiled specification of a previously filed patent application (i.e., parent application). The continuation application allows the inventor to:
- seek broader patent protection; and
- submit claims directed to a competitor’s design around.
The cost to prepare and file the continuation patent application is about $1,000 to $2,000. The continuation patent application must be filed before the parent application has been abandoned or granted. Otherwise, the continuation application cannot be filed.
Continuation application allows you to seek broader patent protection
During the examination of a patent application, the examiner may allow a narrow claim. The inventor could allow the narrow claim to mature as a patent while simultaneously filing the continuation application. In the continuation application, broader claims can be submitted. In this way, you can have your patent and also fight for broader patent protection.
A patent with narrow claims can have value. Having a granted patent permits the inventor to pitch the idea to investors as patented and to mark their product with the patent number. This is significantly better than marking your product as merely patent pending.
A continuation application allows you to get claims against a design around
The continuation patent application is a pending patent application. As such, if the inventor discovers a competitor producing a competing product that exploited a weakness in your patent, the inventor can look at that design around and submit claims without that weakness. If the new claim is allowed, then the inventor can sue the competitor for patent infringement. Without the continuation application, the scope of patent protection is limited to the granted patent.
Competitors would prefer to use a design around than seek a license from patent owners. It is much cheaper and simpler solution.
However, with the continuation, even if the granted patent only has narrow claims, the calculation 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.
Difference between divisional and continuation-in-part patent applications versus a continuation application
A divisional patent application is the same as a continuation application except that the claims are directed to a different part of the invention instead of the same claims as the parent application. A divisional patent application can be used to submit claims against a design around as well.
A continuation in part application is a refiling of the same specification as in the parent application with more aspects of the invention. Without the CIP application, the inventor would have to file a separate application which may increase the overall cost of the patent portfolio being built. The CIP shortens the patent term of any patent directed to the new aspects of the invention.