Continuation in Part Patent Term
The continuation in part patent term is calculated by the filing date of the CIP application, rather than the priority date of the original application.3 min read
The continuation in part patent term is calculated by the filing date of the continuation-in-part (CIP) application, rather than the priority date of the original application. While there are certain benefits to filing a CIP application, your patent term will be shorter than it would be when filing a normal nonprovisional patent application.
What Is a Continuation Application?
After you've filed a patent application, you might decide that you want to increase your future patent's scope. Unfortunately, if you file a new application, you will lose your initial filing date, which could potentially put your patent protections at risk. Luckily, you can maintain your filing date while increasing your application's scope by filing a continuation application.
If you choose to file one of these applications, you should know that you can only edit the claims contained in the original application. You cannot use a continuation application to introduce new claims. Your continuation application's disclosure section cannot include new information, which means you would need to leave out any developments you've made after filing your first application.
Using a continuation application can be a good way to respond to a patent examiner's request to change your initial application. For example, if the examiner states that your application will receive approval if you remove certain claims, you could switch these claims to your continuation applications. This will allow for approval of your original application while giving you the ability to fight for the rejected claims.
In some cases, you might need to file a continuation application if an Office Action sent by the United States Patent and Trademark Office has been finalized prematurely.
What Is Continuation-in-Part?
While you cannot add new material to a patent using a continuation application, you can introduce new material with a continuation-in-part application. The best time to file a CIP application is before publicly disclosing the parent application.
Thanks to new patent rules, you can disclose new information related to your invention with a CIP application while claiming the filing date of the parent application. While you can reveal new information in your CIP application, it's important to remember that your new claims must relate to the subject matter in the original application if you want to benefit from the original filing date.
If you want to claim the original filing date, you must explain why the parent application supports each new piece of information in the CIP application.
Although there are some distinct advantages to CIP applications, there are also drawbacks that might not be immediately clear, including:
- A shorter patent term than the term awarded by a normal application.
- The potential to lose your priority date.
- The possible loss of obviousness.
Advantages of a CIP application that you need to understand if you want to patent an invention include:
- You can add new developments related to your invention that were not available when you filed your patent application.
- A CIP application is a much more flexible option for broadening your future patent's scope.
- CIP applications, unlike normal continuation applications, do not limit the type of information you can reveal.
With a CIP application, you can complete several tasks:
- Updating the disclosure in the parent application.
- Expanding on the claims in the original application.
- Adding new paragraphs to your application.
A CIP application is also a good way to reduce the cost of filing fees by using a single application for both new and old patent disclosures. Extending the life of a continuation application is another use of a CIP application. With your CIP application, you can make small changes to your original patent application instead of filing a completely new application for these claims.
Depending on your invention and the information you disclose, your CIP application might receive multiple priority dates. For instance, some of the claims you include in your application might have priority dates that are more than a year before your application's filing date. Filing a CIP application is the easiest way to protect new features of your invention after you've already filed a normal application.
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