Key Takeaways

  • A continued prosecution application (CPA) allows design patent applicants to continue examination after a rejection without filing a brand-new application.
  • CPAs are available only for design patents; utility and plant patents use Requests for Continued Examination (RCEs).
  • The practice was eliminated for utility and plant patents in 2003 but remains available for design patents.
  • Filing a CPA preserves the original application’s filing date and priority while assigning a new application number.
  • CPAs must be filed before issuance, abandonment, or termination of the original application.
  • Common mistakes include late filing, trying to change the design, or misunderstanding when CPAs are allowed.
  • Strategic use of CPAs can extend the pendency of a design patent and provide another chance at approval.

Continued Prosecution Application: What Is It?

A continued prosecution application is filed when a design patent application is denied. It helps an applicant who believes he or she has a strong case for a design patent. The continued prosecution application can continue the process of getting a patent. When approved, the application goes to the Patent Trial and Appeals Board.

In other patent applications, a similar process is a Request for Continued Examination. This is one area that sets design patent applications apart from utility patent applications, as only design patent applications have the option for a continued prosecution application.

History of Continued Prosecution Applications

In mid-2003, the United States Patent and Trademark Office (USPTO) got rid of continued prosecution applications. This only applies to utility and plant patents. In early 2014, USPTO added an interim rule. This applied to continued prosecution applications for design patents. This interim rule allows an applicant to file a continued prosecution application. The rule applies even when the first application did not include the original declaration of the design.

In reviewing the change, USPTO found good reason to make this change to the rule. It was done without notifying inventors or residents of the U.S. It does not make sense for USPTO to introduce policies for public comment. These policies don't really apply to the general public.

Filing a continued prosecution application requires several steps:

  • You must write new claims for your design
  • You must pay a new filing fee
  • You must send documents to USPTO that identify it as a continuation application

The filing date of this application will remain the same as your original filing date. It will receive a new serial number. Filing this application essentially starts the process again. It puts your ornamental design of an object of manufacture in front of a new reviewer.

Evolution of CPA Practice

The USPTO once permitted continued prosecution applications for utility, plant, and design patents. However, in 2003, CPAs were eliminated for utility and plant patents and replaced by the Request for Continued Examination (RCE). Today, only design patent applicants can use the CPA process.

This distinction is important: CPAs allow design patent applicants to file a continuation or divisional application that keeps the original filing date intact, whereas RCEs apply exclusively to utility and plant patents. Understanding this historical shift helps applicants know which path is available depending on their type of invention.

Why Is a Continued Prosecution Application Important?

A continued prosecution application continues the patent process after a rejection. Without filing the application, you will not receive a design patent. There is no guarantee the continued prosecution application will be accepted, but it is the only way to continue the process without filing a new application.

Legal Framework Under 37 CFR 1.53(d)

The CPA process is governed by 37 CFR 1.53(d), which outlines the rules for filing. Key requirements include:

  • The CPA must relate to a design patent application.
  • The prior application must be complete under USPTO rules.
  • The CPA must be filed before one of the following: payment of the issue fee (unless withdrawn), abandonment of the prior application, or termination of proceedings.
  • The new CPA must identify the prior application and include the same inventors, subject matter, and disclosures.

By complying with these requirements, applicants preserve the continuity of their filing date while gaining another opportunity to advance prosecution.

Reasons to Consider Not Using a Continued Prosecution Application

If you choose not to use a continued prosecution application after your design patent application gets denied, you have two choices:

  • You can accept that the denial means your design is not unique enough for a design patent.
  • You can change your design and file a new application. Before doing so, review the reasons for the denial. If you feel like you can make changes that keep the style and presentation of your design, go ahead and work on it.

If you decide to change your design, you will need to submit a new application. This starts the review process all over again. A continued prosecution application is only for existing patent applications.

More than 25 percent of design patent applications in 2010 included continued prosecution applications. The number has continued to increase.

Reviewers at USPTO view a continued prosecution application as a way to reach a final decision on both sides. The second review determines its final position. It is granted a design patent or denied a second time.

When you consider filing a continued prosecution application, make sure you know that doing so could shorten the term of your patent.

Reasons to Consider Using a Continued Prosecution Application

A continued prosecution application is a helpful option. It exists for inventors who feel their design patent applications were unfairly denied. It is similar to an appeal. The process gives you the chance to get the application in front of a different reviewer.

Another reason designers opt to submit continued prosecution applications is that the process can protect the pending status. When your patent is pending, no other designers or inventors can create something similar to your design. A continued patent application also may help extend the process, giving the applicant time to follow up with the objections made in the original review of the patent application.

Before you decide to file a continued prosecution application, make sure you understand the reasons for the denial. If your design is too similar to something covered under another design patent, the outcome may not change.

Advantages of Filing a CPA

Beyond offering another review, CPAs provide applicants with several practical advantages:

  • Preserves Priority Date – The CPA keeps the original application’s filing date, which is critical in a first-to-file system.
  • Simplifies Record-Keeping – The USPTO uses the same file history, reducing administrative complexity.
  • Flexibility in Strategy – Applicants can respond more effectively to examiner objections without starting over.
  • Shorter Queues – Because CPAs are treated as amended applications, they often move through review more quickly than brand-new filings.

Deadline

Design patents have stricter deadlines than other patents. Design patents do not offer the loopholes available through utility patents. The timeframe is 12 months from public introduction of the product or design. If you're filing for a utility patent, you can file a provisional patent application. Submitting that application adds another 12 months to the timeframe.

Design patents do not have the provisional patent option. You must file an application within 12 months of publicly introducing your unique design. If rejected, you can file a continued prosecution application to continue the review process.

The deadline for filing a continued prosecution application is before one of these situations occurs:

  • You pay the issue fee on the previous application
  • You abandon the previous application
  • You terminate the previous application

It is important to note that continued prosecution applications have higher priority with USPTO. New applications go to the end of the line, but continued prosecution applications move up in the queue. Therefore, the timeframe for reviewing a continued prosecution application is shorter. USPTO treats these applications as amended.

What Could Happen When You Don't File a Continued Prosecution Application?

If you don't file a continued prosecution application, your patent application will expire. If you move forward with getting a design patent in the future, you would submit a new application. This starts the patent review process again.

The deadline for a continued prosecution application is described above. If you wait too long, you could miss the opportunity to submit this application.

Common Mistakes

  • Waiting too long to file a continued prosecution application. The timeline is somewhat confusing. Work with a patent lawyer to avoid missing the window. Once the time period ends, you can no longer submit.
  • Attempting to change the design when filing a continued prosecution application. If you plan to change your design in any way, file a new application for a design patent.
  • Filing a continued prosecution application if your design exists in another patent. Take time to review and understand the rejection. If you have valid reasons why your application should be reconsidered, then file. If it's not an original or patentable design, don't waste your time, money, or resources.

Limitations of CPAs

While CPAs are powerful tools, they have important limitations:

  • No Continuation-in-Part – Applicants cannot introduce new subject matter through a CPA. Only continuation or divisional applications are permitted.
  • Same Inventorship – CPAs generally must list the same inventors as the prior application.
  • Restricted to Design Patents – Utility and plant patent applicants must rely on RCEs, not CPAs.
  • Patent Term Considerations – Filing multiple CPAs may shorten the effective patent term since it is tied to the original filing date.

Why Would I File a Continued Prosecution Application?

Filing a continued prosecution application (CPA) is an option if your design patent application has been rejected. This process gives you another chance at approval by allowing a different USPTO examiner to review your application. When submitting a CPA, you can include additional claims that further explain why your design is unique and patentable, strengthening your case for approval.

Can I File a Request for Continued Examination on a Design Patent?

No. The USPTO eliminated CPAs for utility and plant patents over a decade ago, replacing them with the Request for Continued Examination (RCE). However, design patents were excluded from this change. For design patents, the only way to continue the review process after a rejection is through a continued prosecution application.

Does Filing a Continued Prosecution Application Put Me at the Back of the Queue?

No. A continued prosecution application is not treated like a brand-new filing. Instead, it receives priority status because it is directly linked to your original design patent application. This means your CPA will generally be reviewed faster than a new application, helping you avoid starting over at the end of the USPTO’s queue.

Steps to File

  • In order to file a continued prosecution application for your design patent, you must fill out the required forms
  • Submit the forms to USPTO, along with all required documentation and payment
  • You will need to include additional claims that refute the reasons for the original denial
  • You will also pay a new filing fee

Filing a continued prosecution application is helpful if your design patent appeal is denied. If you feel your unique design of a manufactured product can be patented, filing this application appeals the original rejection. It puts your application in the hands of another reviewer, backed up with more supporting evidence.

Frequently Asked Questions

1. Can I file a continued prosecution application for a utility patent?

No. CPAs are only available for design patents. Utility and plant patents use Requests for Continued Examination (RCE).

2. Does a CPA give me a new filing date?

No. A CPA keeps the original application’s filing date, though it is assigned a new application number.

3. Can I add new material in a CPA?

No. CPAs cannot introduce new subject matter. If you need to expand on your invention, you must file a continuation-in-part application instead.

4. How is a CPA different from an appeal?

A CPA continues examination with the USPTO examiner, while an appeal sends the case to the Patent Trial and Appeal Board.

5. When should I file a CPA?

File before the original design application is abandoned, issued, or terminated to preserve rights and avoid starting over.

If you still have questions about continued prosecution applications, you can post here about your design patent or any other legal need and receive free custom quotes from the top 5% of lawyers. Lawyers on UpCounsel come from law schools such as Harvard Law and average 14 years of legal experience, including work with or on behalf of companies like Google.