Continuing patent application
From Wikipedia, the free encyclopedia
Under United States patent law, a continuing patent application is a patent application which follows an "original" patent application.
For instance, a continuing patent application may be a continuation, divisional, or continuation-in-part application. Those are three special types of patent applications. Whilst continuation and continuation-in-part applications are generally a US concept, divisional patent applications have wider application and their availability is required by Article 4G of the Paris Convention.
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[edit] Continuation
A "continuation application" is a patent application filed by an applicant who wants to pursue additional claims to an invention disclosed in an earlier application of the applicant (the "parent" application) that has not yet been issued or abandoned. The continuation uses the same specification as the pending parent application, claims filing date priority of the parent, and must name at least one of the same inventors as in the parent. This type of application is useful when a patent examiner has allowed some but rejected other claims in an application, or where an applicant may not have exhausted all useful ways of claiming different embodiments of the invention.
[edit] Divisional
- See also: Divisional patent application
A "divisional application" also claims filing date priority from the parent, but differs from a "continuation application" in that a divisional application claims a distinct or independent invention based upon pertinent parts "carved out" of the parent application's specification. A divisional application need not name any of the inventors name of the parent application. This type of application is often the result of a "restriction requirement" by an examiner, because a patent can only claim a single invention (cf. unity of invention).
[edit] Continuation-in-part
Furthermore, a "continuation-in-part" application (or "CIP" or "CIP application"), claiming filing date priority from a parent application, is one in which the applicant adds matter not disclosed in the parent, but repeats some substantial portion of the parent's specification, and has at least one common inventor as named in the parent application. This is a convenient way to claim enhancements developed after the parent application was filed.
[edit] Controversy
U.S. patent law allows an applicant to file as many continuations as necessary in order to get their desired breadth of claims. This has been criticized for creating uncertainty in the public as to what inventions are covered or could be covered by a given patent application. An applicant can seek to get claims with limited scope approved early and then continue to file subsequent continuations over a period of many years seeking broader coverage. Applicants can then wait for new products to emerge that might have been disclosed but not claimed in their original applications. They then draft new claims to cover the new products; file an additional continuation; have a new patent emerge with the new claims; and then demand a license fee from the company selling the new product.
In order to minimize this apparent abuse of the patent system, the USPTO has recently proposed (as of January 3, 2006) several changes to the rules governing how many continuations an applicant can file. The limit will be set at one continuation for each type of invention disclosed in an original application. Furthermore, applicants must file original applications with claims covering all inventions disclosed therein that said applicant might want coverage on. Details of the proposed rule changes are found at the USPTO news web site, [1]
These proposed rule changes are largely opposed by patent agents and attorneys. The rule changes fail to take into account the difficulties that are commonly encountered in patent prosecution. It is not unusual, for example, for multiple continuations to be required in order to fully vett the issues surrounding the allowability of a given set of claims. If an applicant cannot have access to the number of continuations needed, said applicant will have no choice but to file an appeal of an examiner's rejection before all relevant issues have been discussed. This will lead to longer, more expensive patent prosecution processes and largely defeat the original intention of the rule changes.
