Continuation applications

Don’t like having your own inventions used against you?  Before your patent issues, consider filing a continuation application.

Did your examiner just allow your US patent application?  Congratulations!  Before it issues, decide if you want to file any improvements or variations of that invention in the future.

If you do have some improvements or variations in mind, start working on filing a “continuation-in-part” (or CIP).  In a CIP, you are telling the USPTO that you have added some new concepts to your original patent application.  This is OK – worst case the examiner may determine that the new concepts have a later filing date. This also keeps the examiner from using your original patent application against you.

In contrast to a CIP, patent continuation applications are essentially a repeat of the original application. If you want to make changes to the claims, make sure that you disclosed these differences in your original application.

Why file a continuation? 

Perhaps you think that you can get stronger claims the second time around. For example, by making the claims shorter and hence stronger.  Or perhaps there was something in the original application that you forgot to put into your original claims. Both these types of claim changes are fine.

A second common reason is a nagging fear that although you might not have thought of any improvements or variations yet, you might do so later.  Here, if you don’t file a continuation, after your patent issues, the USPTO will use your earlier patent against you.

However, if you file a continuation, it keeps your original patent “alive” a while longer (usually at least another year).  Then, if you do come up with an improvement, you can then file a CIP to your continuation application.  The USPTO will allow you to claim your later improvement without using your original patent against you.