1. What Is a Continuation in Part Patent Application?
2. Continuation in Part Basics
3. Pros and Cons

Patent continuation in part is a type of patent application that adds to or stems from an original, non provisional patent application. These can be called continuation patent applications, CIP (continuation in part) applications, or divisional applications. 

What Is a Continuation in Part Patent Application?

If a patent application is filed after a non-provisional application and repeats an important part of the original application, it is called a continuation in part patent application. These applications will add information that wasn't originally included in the first application. 

These applications are required to be filed with the United States Patent and Trademark Office (USPTO) under the 37 CFR 1.53(b) and have to claim that their purpose is to improve upon the original non-provisional application. 

Continuation in part applications can only be filed with non provisional patent applications under the following rules:

  • 35 U.S.C. 120
  • 35 U.S.C. 121
  • 35 U.S.C. 365(c)
  • 35 U.S.C. 386(c)

If a patent continuation in part application cannot be filed with a provisional application filed under 35 U.S.C. 119(e). This application would need to be called non-provisional application for a provisional patent application, instead of a continuation in part, division, or a continuation. 

If an applicant files a continuation in part patent application, it is not assumed that they accept any and all rejections of the original application the continuation claims to benefit. 

Inventors who file continuation in part patent applications on their own can file for the benefit of patent applications that included other inventors. These can disclose pieces of the information regarding the invention according to the rules and regulations found in codes 35 U.S.C. 120 and 37 CFR 1.78

The USPTO isn't required to determine if the requirements specified in 35 U.S.C 120 were met by the original non provisional patent application unless the applicant is waiting on a ruling on the parent patent from a proceeding in the USPTO. 

Continuation in Part Basics

If the first patent application is considered the "parent" application, subsequent continuation, division, or continuation in part patent applications can be viewed as its children. 

A continuation in part patent application should contain a good amount of the information included in the parent or original patent application as well as whatever improvements or changes it hopes to support, called "new matter."

The purpose and layout of a continuation in part patent application is defined well by the Manual of Patent Examining Procedure. 

The claims included in a continuation in part application can have varying priority dates, but this depends on if the parent application supports the information in the CIP or if it's brand new. 

If an inventor doesn't need to have claims that are in split sets, they can filed a continuation in part application rather than an all-new patent application

When a continuation in part patent application is approved, the lifespan of the patent is still measured using the date that the parent application was filed. If the inventor wants to lengthen the term of their patent, they might benefit from filing for a new patent. 

Basically, once an inventor files for a patent, they will likely need to make changes to the patent throughout its life. The continuation in part, divisions, and continuation patent applications offer inventors the ability to make such changes without submitting brand new patent applications each time. 

Remember that none of these continuation application types are able to be filed for the benefit of a provisional application, but must be filed for a non-provisional patent. The only way a patent application can be filed with a provisional application is if a non-provisional application is filed. 

Pros and Cons

Continuation in part patent applications offer some of the following benefits:

  • Lower costs during the term of the patent
  • Simpler filing 
  • Maintains the original filing date of the parent patent application

Continuation in part applications have a few downsides depending on the goals of the applicant including:

  • Shorter term for application versus an all-new patent application
  • Potential for any mistakes or weaknesses in the parent application to be used against the applicant filing the continuation

Inventors who want to simply modify or add on to the non provisional patent applications they originally filed can benefit from using a patent continuation in part. These applications offer flexibility and ease for the ever-changing process of inventing. 

If you need help with a patent continuation in part, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.