Patent Continuation: Everything You Need to Know
A patent continuation is an application that will allow the examination of a patent to continue.3 min read
Updated November 27, 2020:
A patent continuation is an application that will allow the examination of a patent to continue. By filing for a continuation, you will be able to argue your case to the United States Patent and Trademark Office that you will need your patent protection to provide a much broader scope than the original patent issued had covered.
Parent and Children Applications
When referring to the original patent and subsequent applications, the terms "parent" and "children" are often used. When a continuation of a patent application has been filed, it will gain the same priority date as the original patent. It is also essential to file any of these continuation patents before the original patent application has been issued or abandoned.
A continuation application can also be used for an applicant who may want to include additional inventions that were originally disclosed but not allowed to be filed with the original patent.
The Manual of Patent Examining Procedure (MPEP) states that before the official patenting or abandonment of the parent patent application, an applicant has the right to file a continuation if they need to introduce a new set of claims or establish further examination of the application.
This is a crucial process for inventors who may want to add to their original patent application but do not wish to have their date pushed back to the later filing time. It is important to note that during a continuation application, you may only edit the claim. The application is not the time to introduce anything that would be considered a completely new matter.
Reasons To File A Continuation Patent Application
There are many reasons an inventor can benefit from filing a continuation patent application. Some of the most common reasons for filing include:
- Multiple inventions. The United States Patent and Trademark Office only allows for a patent to lay claim to one invention. In many cases, though, patents are drafted to cover many inventions. In these cases, there may be a restriction requirement handed down by the USPTO, which may ask the applicant to divide them up for separate examinations.
- Broadened claims. When you originally file for a patent, you are often limited to a narrow coverage. A follow-up or continuation patent application can be used to provide for broader protection.
- Going on the offensive. Some inventors will use a continuation application to go on the offensive by trying to cover a product that a competitor puts out because it was described in the original patent.
- Creating uncertainty. While the application can be used to build both offensive and defensive positions, it also can be used to create uncertainty and deter competitors further.
- Evolving technology. Since technology is constantly changing and evolving, a continuation application can be used to provide for future technology advancements that were supported in the original patent.
- Law in flux. In the same vein that technology is constantly changing, so is the law. With legal developments that can affect many patents, you can use continuation applications to provide tools to address these legal developments.
- Litigation. When a patentee is expecting some form of patent litigation, a pending continuation application can help you provide a reaction to the lawsuit outcome.
- Maximizing the value. There is a chance that a patent could be sold or licensed in the future so maintaining a continuation application can add value to the patent by allowing the buyer or license to continue the pursued objectives.
- Deferring. Sometimes a business will need to defer a cost or a decision. A continuation application is sometimes used as a delay tactic to restart the timeline. You can do this by abandoning the original patent and replacing it with a continuation that is making similar claims.
- Keeping options open. Since you must be filing a patent continuation before the original patent has been accepted, you can use the continuation the same as if you were to purchase an options contract, which will allow you to pursue the new claims that may be valuable in the future.
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