Continuing patent application
Encyclopedia
Under United States patent law
, a continuing patent application is a patent
application which follows, and claims priority to, an earlier filed patent application
.
A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part application. While continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent application
s are also available in other countries, as such availability is required under Article 4G of the Paris Convention
.
From 1838 to 1861, inventors could file patent applications on improvements to their inventions. These were published as "additional improvement patents" and were given numbers preceded by "A.I.". About 300 of these patents issued.
s to an invention
disclosed in an earlier application of the applicant (the "parent" application) that has not yet been issued or abandoned. The continuation uses the same specification as the pending parent application, claims the priority based on the filing date of the parent, and must name at least one of the inventors named in the parent application. This type of application is useful when a patent examiner allowed some, but rejected other claims in an application, or where an applicant may not have exhausted all useful ways of claiming different embodiments of the invention.
Importantly, during the prosecution of a continuation application, the applicant may not add additional disclosure to the specification. If the inventor needs to supplement the disclosure of the earlier parent application, he must file a continuation-in-part application.
In the typical case, a patent examiner will examine patent claims and amendments in an original patent application for two rounds of "office actions" before ending examination. However, often two office actions are not enough to resolve all of the issues in the patent prosecution. Therefore, it is common to think of a continuation application as though the applicant is merely purchasing more examination time from the patent examiner.
).
A reissue application which attempts to get broader coverage than the originally issued patent must be filed within two years from the grant date of the said originally issued patent.
. Previously, USPTO rules allowed an inventor to file as many continuations as necessary to get desired breadth of claims. The procedure was criticized for creating uncertainty as to what is covered or could be covered by a given patent application. An inventor, for example, could have sought to get claims with limited scope approved early, and then continue to file continuations over many years seeking broader coverage. For example, inventor Jerome Lemelson filed a series of continuations over thirty years to get a very broad patent on bar code readers. This patent was issued in 1984, long after bar code readers had become an integral part of the U.S. economy. Jerome Lemelson was then able to collect over a billion dollars in license fees from large companies using bar code readers.
To minimize this alleged abuse of the patent system, the USPTO proposed several changes to the rules as to the number of continuations an applicant can file. The proposed changes were announced on January 3, 2006, and were published in final form on August 21, 2007, after various modifications were made pursuant to input received as public notice and comment
(during which the public was invited to comment on the proposed rule changes). Many of the provisions in the new rules went into effect November 1, 2007; however, certain additional exemptions apply for continuation applications filed before the publication date of August 21, 2007, even after November 1, 2007.
The new rules limit an inventor to filing two continuation applications for each type of invention disclosed in an original patent application, unless the applicant can show "good cause" for filing additional continuations. Furthermore, applicants can file only one RCE for each "family" of applications (that is, the group of applications including original applications and each of the continuation applications claiming the benefit of priority of the original application) unless the USPTO grants the applicant permission upon showing "good cause."
The proposed changes are generally opposed by patent agents and attorney
s, manufacturing companies, biotechnology companies, and independent inventors. They are concerned that the rule changes fail to consider the difficulties commonly encountered in getting a patent, and that the changes would result in inventors failing to get the full range of patent protection to which they are entitled. The groups also maintain that the rule changes are not consistent with the current regulations on continuations.
The rule changes are generally favored by software companies, electronics companies and US government agencies for the reasons given above. Those that favor the rule changes feel that said changes are consistent with the laws governing continuation practice.
On August 22, 2007, inventor Dr. Triantafyllos Tafas sued the USPTO in the United States District Court of the Eastern District of Virginia on the ground that the rule changes were in violation of the U.S. patent law and therefore are invalid. On October 9, 2007, pharmaceutical company GlaxoSmithKline
filed a similar suit seeking a preliminary injunction to prevent the enforcement of the new rules. The court consolidated the two cases and scheduled a hearing on GlaxoSmithKline's motion for October 31, one day before the rules were to go into effect. On October 31, the court granted a preliminary injunction which prohibits the USPTO from enforcing the patent rules on continuations and claims which were to come into effect the following day. On April 1, 2008, the injunction was made permanent, but in March 2009, it was overturned by Federal Circuit Court of Appeals.
In October 2009, USPTO has withdrawn proposed changes to continuation rules.
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, a continuing patent application is a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
application which follows, and claims priority to, an earlier filed patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
.
A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part application. While continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent application
Divisional patent application
A divisional patent application is a type of patent application which contains matter from a previously filed application...
s are also available in other countries, as such availability is required under Article 4G of the Paris Convention
Paris convention
The Paris convention might refer to:* The Paris Convention on Third Party Liability in the Field of Nuclear Energy* The Paris Convention for the Protection of Industrial Property...
.
Early history
Current law in the U.S.
Under the law in the U.S., inventors may file several different types of patent applications to cover new improvements to their inventions or to cover different aspects of their inventions. These types of patent applications include "continuation", "divisional", "continuation in part", and "reissue".| Summary of continuing patent applications in the US | ||
|---|---|---|
| Type | Disclosed in parent? | Claimed in parent? |
| Divisional | Yes | Yes |
| Continuation | Yes | No |
| Continuation-in-part | No | No |
Continuation
A "continuation application" is a patent application filed by an applicant who wants to pursue additional claimClaim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s to an invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
disclosed in an earlier application of the applicant (the "parent" application) that has not yet been issued or abandoned. The continuation uses the same specification as the pending parent application, claims the priority based on the filing date of the parent, and must name at least one of the inventors named in the parent application. This type of application is useful when a patent examiner allowed some, but rejected other claims in an application, or where an applicant may not have exhausted all useful ways of claiming different embodiments of the invention.
Importantly, during the prosecution of a continuation application, the applicant may not add additional disclosure to the specification. If the inventor needs to supplement the disclosure of the earlier parent application, he must file a continuation-in-part application.
In the typical case, a patent examiner will examine patent claims and amendments in an original patent application for two rounds of "office actions" before ending examination. However, often two office actions are not enough to resolve all of the issues in the patent prosecution. Therefore, it is common to think of a continuation application as though the applicant is merely purchasing more examination time from the patent examiner.
Request for continued examination
A request for continued examination (RCE) is a request by an inventor for continued prosecution after the patent office has issued a "final" rejection. An RCE is not considered a continuing patent application - rather, prosecution of the pending application is reopened. The inventor pays an additional filing fee and continues to argue his case with the patent examiner. No RCE was allowed prior to June 8, 1995. See 37 CFR 1.114.Divisional
A divisional application also claims priority based on the filing date of the parent application, but differs from a continuation application in that a divisional application claims a distinct or independent invention "carved out" of the parent application. A divisional application must share at least one of the inventors named in the parent application. A divisional application is often filed after the examiner issued a "restriction requirement", because a patent can only claim a single invention (cf. unity of inventionUnity of invention
In most patent laws, unity of invention is a formal administrative requirement that must be met by a patent application to become a granted patent. Basically, a patent application can relate only to one invention or a group of closely related inventions. The purpose of this requirement is...
).
Continuation-in-part
A "continuation-in-part" application ("CIP" or "CIP application"), claiming priority based on the filing date of the parent application, is one in which the applicant adds subject matter not disclosed in the parent, but repeats substantial portion of the parent's specification, and shares at least one inventor with the parent application. The CIP application is a convenient way to claim enhancements developed after the parent application was filed. It is the successor to the earlier "additional improvement" patents mentioned above.Reissue
If an issued patent is found to be defective, then the patent owner can surrender the patent and refile the original application to correct the defect. One such defect occurs when the issued patent fails to claim the full scope of the disclosed invention. Thus, an inventor can submit the patent application again with broader claims and attempt to get the full coverage he is entitled to. The inventor is not, however, allowed to add new features to the invention.A reissue application which attempts to get broader coverage than the originally issued patent must be filed within two years from the grant date of the said originally issued patent.
Controversy around attempted changes by USPTO to continuation practice
In 2007, USPTO announced new regulations under 37 CFR (published August 21, 2007), significantly altered procedures regarding continuation application before the USPTOUnited States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
. Previously, USPTO rules allowed an inventor to file as many continuations as necessary to get desired breadth of claims. The procedure was criticized for creating uncertainty as to what is covered or could be covered by a given patent application. An inventor, for example, could have sought to get claims with limited scope approved early, and then continue to file continuations over many years seeking broader coverage. For example, inventor Jerome Lemelson filed a series of continuations over thirty years to get a very broad patent on bar code readers. This patent was issued in 1984, long after bar code readers had become an integral part of the U.S. economy. Jerome Lemelson was then able to collect over a billion dollars in license fees from large companies using bar code readers.
To minimize this alleged abuse of the patent system, the USPTO proposed several changes to the rules as to the number of continuations an applicant can file. The proposed changes were announced on January 3, 2006, and were published in final form on August 21, 2007, after various modifications were made pursuant to input received as public notice and comment
Notice of proposed rulemaking
A notice of proposed rulemaking is a public notice issued by law when one of the independent agencies of the United States government wishes to add, remove, or change a rule or regulation as part of the rulemaking process. It is an important part of United States administrative law which...
(during which the public was invited to comment on the proposed rule changes). Many of the provisions in the new rules went into effect November 1, 2007; however, certain additional exemptions apply for continuation applications filed before the publication date of August 21, 2007, even after November 1, 2007.
The new rules limit an inventor to filing two continuation applications for each type of invention disclosed in an original patent application, unless the applicant can show "good cause" for filing additional continuations. Furthermore, applicants can file only one RCE for each "family" of applications (that is, the group of applications including original applications and each of the continuation applications claiming the benefit of priority of the original application) unless the USPTO grants the applicant permission upon showing "good cause."
The proposed changes are generally opposed by patent agents and attorney
Patent attorney
A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing an opposition...
s, manufacturing companies, biotechnology companies, and independent inventors. They are concerned that the rule changes fail to consider the difficulties commonly encountered in getting a patent, and that the changes would result in inventors failing to get the full range of patent protection to which they are entitled. The groups also maintain that the rule changes are not consistent with the current regulations on continuations.
The rule changes are generally favored by software companies, electronics companies and US government agencies for the reasons given above. Those that favor the rule changes feel that said changes are consistent with the laws governing continuation practice.
On August 22, 2007, inventor Dr. Triantafyllos Tafas sued the USPTO in the United States District Court of the Eastern District of Virginia on the ground that the rule changes were in violation of the U.S. patent law and therefore are invalid. On October 9, 2007, pharmaceutical company GlaxoSmithKline
GlaxoSmithKline
GlaxoSmithKline plc is a global pharmaceutical, biologics, vaccines and consumer healthcare company headquartered in London, United Kingdom...
filed a similar suit seeking a preliminary injunction to prevent the enforcement of the new rules. The court consolidated the two cases and scheduled a hearing on GlaxoSmithKline's motion for October 31, one day before the rules were to go into effect. On October 31, the court granted a preliminary injunction which prohibits the USPTO from enforcing the patent rules on continuations and claims which were to come into effect the following day. On April 1, 2008, the injunction was made permanent, but in March 2009, it was overturned by Federal Circuit Court of Appeals.
In October 2009, USPTO has withdrawn proposed changes to continuation rules.
See also
- Double patentingDouble patentingDouble patenting is the grant of two patents for one single invention, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one...
- Priority rightPriority rightIn patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
- Provisional applicationProvisional applicationUnder United States patent law, a provisional application for patent is a legal document filed in the United States Patent and Trademark Office , that establishes an early filing date, but which does not mature into an issued patent unless the applicant files a regular patent application within one...
- Patent familyPatent familyA patent family is "a set of patents taken in various countries to protect a single invention ." In other words, a patent family is "the same invention disclosed by a common inventor and patented in more than one country."- See also :* Continuing patent application* Triadic patent* INPADOC...