Continued Prosecution Application: Everything You Need to KnowPatent Law ResourcesDesign Patent
A continued prosecution application is filed when a design patent application is denied, and helps applicants who have a strong case for a design patent.6 min read
2. History of Continued Prosecution Applications
3. Why Is a Continued Prosecution Application Important?
4. Reasons to Consider Not Using a Continued Prosecution Application
5. Reasons to Consider Using a Continued Prosecution Application
7. What Could Happen When You Don't File a Continued Prosecution Application?
8. Common Mistakes
9. Frequently Asked Questions
10. Steps to File
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.
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.
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.
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.
- 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.
Frequently Asked Questions
- Why would I file a continued prosecution application?
If your design patent application is rejected, you can file a continued prosecution application for another review. This process includes review by a different USPTO reviewer. You will include additional claims with your application that further break down reasons your design is patentable.
- Can I file a Request for Continued Examination on a design patent?
No. About a decade ago, USPTO got rid of the continued prosecution application for utility and plant patents. The Request for Continued Examination replaced this process for utility and plant patents only. The only option for additional review of a design patent is a continued prosecution application.
- Does filing a continued prosecution application put me at the back of the queue?
No. Your application will come to USPTO and be prioritized based on its status as a continued prosecution.
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.
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.