Pros and cons of filing a continuation-in-part application

Bottom line

The pro for filing a continuation-in-part application is lower downstream costs.  The cons are a shortened patent term and also your prior arguments and statements made in the parent application/patent can and will be used against you to narrowly interpret the claim language in a patent maturing from the subsequent continuation-in-part application.

To discuss the cons of claim interpretation in filing a continuation-in-part application, the Trading Technologies v. Open E Cry case is discussed below.

A continuation-in-part application (CIP) is sometimes referred to as an “add-on” to your existing patent application.  Initially, a patent application is filed which discloses the overall concept of your invention.  During further research and development, it may be advantageous to incorporate additional features into the patent application.  In an effort to streamline the discussion with clients, patent attorneys may indicate that you can “add-on” to your existing patent application.  This is somewhat true.

You can certainly copy your original patent application, modify or tack onto the back end of the original application any new features for refilling with the United States Patent and Trademark Office (USPTO).  However, the new subject matter does not receive the benefit of the filing date of the original patent application.  Rather, the new subject matter is deemed to be filed as of the filing date of the CIP application.  You receive no benefit from the filing date of the original application for the new subject matter. The benefit of an earlier filing date might not appear to be significant but it is when you are up against a relevant prior art reference that you need to overcome.

Pros of filing CIP

The benefit of the CIP application is that you have the flexibility, at a later time, to claim the subject matter in your original application and receive the benefit of the filing date of your original patent application.  Alternatively, you can add claims solely to the new subject matter which is assigned the filing date of your later filed CIP application.  As such, you don’t have to incur the costs of maintaining two applications which you would have had to do if you filed a separate new application for the new subject matter.

Cons of filing CIP

The con for filing a CIP application instead of a separate independent application is that the term of any patent maturing from the CIP application is calculated from the filing date of your earlier filed original patent application.  It is not calculated from the filing date of your later filed CIP application.  Simply put, the patent term is cut short in a CIP.

Another factor for not filing a CIP application is that the arguments that you present in the original patent application is generally also applied to any patent maturing from the CIP application.  In Trading Technologies v. Open E Cry (August 30, 2013 Fed. Cir.), the patent at issue related to trading software, and more particularly, to a “static” feature in the trading software.  The patent owner filed a CIP application and attempted to remove the “static” limitation from the claims by extensively amending the specification and deleting the term “static” from the claim set.  The district court held that the claims of the patent maturing from the CIP application were limited to a static feature since the parent patent was allowed purely based on this limitation.  Fortunately for the patent owner, in this case, the Federal Circuit held that since the CIP was extensively amended from the original specification, the district court erred in transferring the meaning of the claim language (i.e., static) of the parent patent into the CIP patent.

Summary

Nevertheless, this case illustrates that the defendant can and will use your statements against you to limit the claims of the CIP patent based on your arguments made in your predecessor patent applications.  In my opinion, one should limit use of the CIP unless the client has a real need to do so.  Also, be aware of the issues of filing a CIP based on a parent application filed before the effective date of the America Invents Act.

I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.