What is a continuation-in-part patent (CIP) application?

A continuation-in-part patent application is a type of application that incorporates the subject matter of the parent application and additionally includes new subject matter.  The inventor can now submit new claims directed to the new subject matter while still being able to claim the benefit of an earlier filing date for any subject matter (i.e., information) that was disclosed already in the parent application.

The continuation-in-part application must be filed during the pendency of the parent application to satisfy the co-pendency requirement. Additionally, the continuation-in-part patent application must include a statement claiming priority back to the parent application in order to receive the benefit of the filing date of the earlier application.

What are the priority dates for the continuation-in-part application?

The priority dates for the continuation-in-part application are identified by the subject matter and their respective filing dates. For example, the priority date for the subject matter in the parent application is the filing date of the parent application.

In contrast, the priority date for the new subject matter in the continuation-in-part application is the filing date of the continuation-in-part patent application.

What are the reasons for filing a continuation-in-part application?

You should file a continuation-in-part application if you want to have the freedom of pursuing claims directed to the subject matter solely in the parent application or solely in the continuation-in-part application while controlling costs.  By filing the continuation-in-part application, you only have one patent family to manage.

In contrast, if you were to file a separate patent application for the new subject matter (instead of the CIP application), you would have to manage the patent family associated with the parent application as well as the patent family associated with the new filing.

Why shouldn’t you file a continuation-in-part patent application?

You shouldn’t file a continuation-in-part application if your primary goal is to obtain a patent with the longest patent term possible. When you file a continuation-in-part patent application, any patent maturing from such application is calculated from the filing date of its earliest nonprovisional priority filing, not the filing date of the CIP application. As such, you lose a portion of the patent term between the filing date of the earliest nonprovisional priority filing and the filing date of the continuation-in-part application.

What are the costs for filing a continuation-in-part patent application?

The cost for filing a continuation-in-part application includes:

1. The filing fee, examination fee, and search fee.
2. Attorney’s fee: The attorney’s fee covers the time for an attorney to prepare the patent specification and the claim set directed to the new subject matter.

How to file a continuation-in-part application?

1. Copy and paste the written specification and drawings of the parent application into the continuation-in-part application.
2. Describe how to make and use the new aspect of the invention which was not previously included in the parent application.
3. Show how to make and use the new aspect of the invention in the drawings.
4. In the application data sheet, identify the parent application and claim priority to the parent application.
5. Optionally, in the first sentence of the written specification, incorporate by reference the entire contents of the parent application.
6. File the continuation-in-part application during the pendency of the parent application to satisfy the co-pendency requirement.

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.