• Home
  • About
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patent
      • Utility Patents
      • Design Patents
      • Patent Application
      • Patent Defense
      • Patent Enforcement
      • Working with In-House Attorneys
    • Trademark
      • Trademark Search
      • Trademark Application
      • Trademark Enforcement
      • Trademark Defense
    • Licensing
    • Worldwide IP
    • Risk Management
    • Due Diligence
  • Industries
    • Browse Patent Samples
    • Automotive Patents
    • Construction Patents
    • Consumer Products Patents
    • Electronics Patents
    • Food, Beverage, & Other Culinary Patents
    • Manufacturing Patents
    • Medical Products & Devices Patents
    • Optics Patents
    • Software & App Patents
    • Tools & Equipment Patents
  • Learning Resources
    • First-Time Inventor?
    • Why Patent Your Invention in a Bad Economy?
    • Videos on Patents
    • Search 180+ Articles
      • Patent process
        • Overview of Patent Process
          • Patent process timeline and major milestones
          • Patent Process: Invention to Patent Granted (Simplified)
          • Patent process, overall steps and procedures
        • Overview of the examination process within the USPTO
          • Highs and lows of securing patent protection for your invention
          • What is the Patent Office procedure after filing a patent application?
        • Benefits of a Patent Search
          • What is a patent search and How to do it?
        • Patent attorneys, agents and the USPTO can help with the patent process
        • USPTO Website
      • Invention Agreements
        • What is an NDA and when to use them?
        • How to use a contract to protect your invention?
        • Working with others without losing your IP rights
        • Patent Assignments for Independent Contractors
        • Losing Invention Rights When Hiring or Collaborating with Others
        • Avoid Problems: Get an Invention Assignment Agreement
      • Protect Inventions
        • Misconceptions of Provisional Patent Applications
        • Do you need to get your patent attorney to sign an NDA?
        • Can a confidentiality agreement protect me like a patent application?
        • Four types of intellectual property to protect your idea and how to use them
          • Overview of Patents and Intellectual Property
          • Patent protection benefits and why every inventor should consider getting one
          • 8 tips to successfully protect your idea
          • Benefits of Patent Protection
          • Best uses for design patents
        • Reasons to only market your invention after securing patent pendency
          • Dangers of 1 yr grace period under first-inventor-to-file system
          • File a patent application before telling others about the invention
        • Risks and benefits of securing software patent protection
          • Strategy to overcome patentable subject matter rejection
        • Pros and cons of filing a continuation-in-part application
          • What is a continuation patent application?
      • How Patent Applications Work: the Basics
        • How to respond to an office action?
        • Request for non-publication of a patent application
        • Anatomy of a Patent Document
        • How to write a broad patent application?
        • Design patents: pros and cons
      • Patent costs
        • How much does it cost to get a utility patent?
        • Provisional Patent Application: Cheap Alternative?
        • Patent Cost Framework and cash flow
        • Provisional patent application: a cheap option?
        • Cheap provisional patent applications
      • Patent infringement
        • Basics of writing a patent claim for a patent application
        • Patent Marking: Everything you wanted to know
        • Avoiding Patent Infringement
        • Can I Copy My Competitor’s Product?
        • Can I Copy My Competitor’s Product? (Design Patent)
      • Worldwide patents
        • Pros and cons of securing worldwide patent protection and their steps
        • Foreign patent filing to secure protection in other countries
      • Responding to Office Actions
        • Overview of Office Actions
      • Trademarks
        • Trademark Registration: common law, state and federal
        • How to obtain a federal trademark registration?
        • How to select a trademark?
          • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Protect Inventions / Pros and cons of filing a continuation-in-part application

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

July 6, 2019 by James Yang

continuation-in-part application: Pros and Cons 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.

Related Articles for Protecting Inventions

  • Four types of intellectual property you can use to protect your idea and how to use them
  • 8 tips to successfully protect your idea
  • Reasons to only market your invention after securing patent pendency
  • Patent protection benefits and why every inventor should consider getting one
  • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Patent attorney and getting them to sign a confidentiality agreement
  • Can a confidentiality agreement protect me like a patent application?
  • Dangers of 1 yr grace period under first-inventor-to-file system
  • Beware of marketing an invention before filing a patent application
  • Risks and benefits of securing software patent protection
  • Strategy to overcome patentable subject matter rejection
  • Best uses for design patents
  • Overview of Patents and Intellectual Property
  • Pros and cons of filing a continuation-in-part application
  • Benefits of Patent Protection
  • Continuation, divisional and continuation-in-part applications
  • Importance of Documenting the Invention
  • Abstract ideas require something more for patent protection
  • Abstract idea hard to define for patent eligibility purposes
  • USPTO Report On patent-eligible subject matter
  • Broad patents spread a wide net but more likely to be invalid
  • Misconceptions of provisional patent application


  • Facebook
  • Twitter
  • LinkedIn

Author

James Yang is a patent attorney. For more than 16 years, James Yang has been representing clients to secure patent protection for their inventions and register trademarks to protect their brands. If you need help, call him at (949) 433-0900. Read More…

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?
  • Why patent your invention in a bad economy?

Patent Book

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

RECEIVE PATENT ARTICLES

Stay up to date on major changes and get tips on the patent process.

We respect your privacy.

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

Utility Patents
Design Patents
Patent Prosecution Services
Patent Defense Services
Patent-Law Counsel for In-House Attorneys
Trademark Prosecution Services
See All Services

Industries

Automotive Patents
Consumer Products Patents
Culinary Patents
Manufacturing Patents
Medical Patents
Optics Patents
Software & App Patents
See All Industries

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use and Privacy Policy

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete Terms of Use
Complete Privacy Policy

ADA Compliance

OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
Accessibility Statement

Service Area

From our office in Irvine, California, we serve clients from all areas within Orange County and Los Angeles County, California.

© 2023 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney