Continuing patent application
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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] Early history
From 1838 to 1861, inventors could file patent applications on improvements to their inventions. These were published as "additional improvement patents" and were given numbers preceded by "A.I.". About 300 of these patents issued. [1]
[edit] Current United States patent law
Under current US patent law, inventors may file several different types of patent applications to cover new improvements to their inventions or to cover different aspects of their inventions. These types of patent applications include "Continuation", "Divisional", "Continuation in Part", and "Reissue".
[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] Request for continued examination
A request for continued examination (RCE) is a request from an inventor to continue to try to get a patent after the patent office has issued a "final" rejection. The inventor essentially pays an additional filing fee and then continues to argue their case with the patent examiner.
[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 named in 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
A "continuation-in-part" application ("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. It is the successor to the earlier "additional improvement" patents mentioned above.
[edit] Reissue
If an issued patent is found to be defective, then the patent owner can surrender the patent and refile the original application to correct the defect. One such defect is that the issued patent fails to claim the full scope of the invention. Thus an inventor can resubmit the patent application with broader claims and attempt to get the full coverage they are entitled to. They are not, however, allowed to add new features to their invention.
A reissue application that attempts to get broader coverage than the original issued patent must be filed within two years of the publication date of said original issued patent.[2]
[edit] Proposed changes to continuation practice
Current USPTO rules allow an inventor 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 marketplace as to what inventions are covered or could be covered by a given patent application. An inventor, for example, 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. The inventor Jerome Lemelson filed a series of continuations over a period of thirty years to get a very broad patent to issue on bar code readers. This patent issued in 1984, long after bar code readers had become an integral part of the US economy. Jerome Lemelson was then able collect over a billion dollars in license fees from large companies using bar code readers.
In order to minimize this apparent abuse of the patent system, the USPTO has proposed several changes to the rules governing how many continuations an applicant can file. These proposed rule changes were announced on January 3, 2006. As yet, however, they have not been implemented.
The new rules would limit an inventor to filing one continuation for each type of invention disclosed in an original patent application. Furthermore, inventors must file original applications with claims covering all inventions disclosed within said application that the inventor wants coverage on.[3]
The public has been invited to comment on these proposed rule changes.[4]
The proposed rule changes are generally opposed by patent agents and attorneys, [5] manufacturing companies, [6] biotechnology companies, [7] and independent inventors. [8] The concerns they have raised are that the rule changes fail to take into account the difficulties that are commonly encountered in getting a patent and that this will result in more inventors failing to get the full range of patent patent protection they are entitled to. They are also concerned that the rule changes are not consistent with the laws governing continuation practice.
The rule changes are generally favored by software companies, [9] electronics companies [10] and US government agencies [11] for the reasons given above. Those that favor the rule changes feel that said changes are consistent with the laws governing continuation practice.
[edit] References
- ^ M.P.E.P. 901.04 U.S. Patents Prior Art, Classification, and Search
- ^ 35 U.S.C. 251 Reissue of defective patents.
- ^ USPTO Proposes Measures To Improve Patent Examination
- ^ Comments on Proposed Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims, Notice of proposed rulemaking
- ^ American Intellectual Property Law Association comments on proposed rule changes for Continuation practice
- ^ Honda R&D Americas comments on proposed rule changes to Continuation practice
- ^ Biotechnology Industry Association comments on proposed rule changes for Continuation practice
- ^ Inventors Alliance comments on proposed rule changes to Continuation practice
- ^ Business Software Alliance comments on proposed rule changes for Continuation practice
- ^ Intel comments on proposed rule changes to Continuation practice
- ^ The Antitrust division of the US Department of Justice comments on proposed rule changes for Continuation practice
