Continuation patent applications, continuation-in-part (CIP) patent applications, or divisional patent applications (jointly referred to as "related applications") are applications that are filed after an original application (the "parent application") is filed but before the parent application issues as a patent. Strategically, filing these types of related applications can significantly improve your intellectual property protection.

• Continuation Application: A continuation application is based on the parent application in that there is no new information about the invention, but the continuation application contains different claims from the parent application. One common reason to file a continuation application is that the applicant has amended the original claims to obtain an indication of allowance from the Examiner, but believes that additional coverage should be available. Filing a continuation application generally costs $2,500-$3,500 (plus costs such as PTO filing fees). In some situations, an applicant may want to prepare a response (e.g. a preliminary amendment) to previous communications from the PTO (from the parent application). The cost for preparing this response would be based on the time needed to prepare the response. Applicants often opt to delay filing the response. If delayed too long, the result could be that the first Office action from the PTO is a final Office action.
• CIP Application: In a CIP application, additional information about the invention or new subject matter may be added if that subject matter has not been "disclosed" (e.g. publicly used, offered for sale, or the subject of a publication - although this definition is changing) more than one year prior to the filing of the CIP. The original subject matter retains the priority date of the parent application whereas the new subject matter is dated from the filing of the CIP application. Filing a CIP application is highly dependent on the subject matter that is to be added. Please note that the publication of the parent application (including issuance or the publication of the application) and other “disclosures” (e.g. public uses or offers to sell) by the inventors that happened more than one year before the effective filing date of the CIP application may be usable as prior art against the CIP application. (See the Strategic CIP discussion below.)
• Divisional Application: Divisional applications are filed when a "restriction requirement" was issued in the parent application (the original application). An Examiner will issue a restriction requirement when he believes that there is more than one invention presented in a patent application. In response to a restriction requirement, the applicant must choose (elect) a single invention to pursue in the original patent application, but then may file divisional applications directed to the remaining (non-elected) claims at any time prior to the parent application issuing. Filing a divisional application generally costs approximately $2,500-$3,000 (plus costs such as PTO filing fees).

Timing: It is crucial to remember that a related patent application can only be filed based on a pending parent application. That is, once the parent application is issued, related patent applications cannot be filed claiming the benefit of the originally filed patent application. To be clear, if application #1 has issued, but application #2 (that was a continuation of application #1) is still pending, application #3 CAN be filed and claim priority to application #2 and application #1 (through application #2) as long as application #2 is pending.  Once application #2 issues, application #3 cannot be filed as a continuation of application #2 or application #1.

Keeping Applications "Alive": While related applications are being prosecuted in the PTO, they remain "pending." As long as an application is pending in the PTO, if a later infringer tries to "design around" the claims (either of the issued parent patent or the pending related application), the applicant may amend the claims of the pending application or file another related application that has new claims directed to the infringer’s product or activities as long as there is support for the new claims in the original application. This can be a very powerful tool. Strategically, in most situations, waiting to file a related patent application until just before the parent application will issue (e.g. filing the application within a few weeks of paying the issue fee of the parent application) provides the best value. If there is litigation or certain types of business negotiations, there may be strategic reasons to file the related application sooner.

Cost: Filing additional applications can be expensive. In addition to the cost of preparing the related application and the filing fees, you should expect additional fees for prosecuting the related application. These additional fees may include fees for responding to additional Office actions. You should also expect additional sets of issue fees, publication fees (if the application is published), and maintenance fees. Proofreading and correction fees may also be incurred.

America Invents Act (AIA) Issues: For applications that have original (priority) filing dates that pre-date March 15, 2013 (the date of the AIA), filing a continuation application or a divisional application can preserve the right to have the application reviewed under the pre-AIA rules (which are generally considered to be more favorable to applicants than post-AIA rules). No new subject matter can be claimed. Once new subject matter has been claimed (even by mistake), the post-AIA rules apply for all future applications. A CIP application that claims new subject matter, therefore, would be examined under the post-AIA rules.

Why File a Continuation Patent Application?

After filing an “original” (or “parent”) patent application, there are many reasons that a patent applicant may want to file a “continuation” (or “child”) patent application.  Although usually filed just before the original application issues, the continuation application may be filed at any time during the “pendency” of the original application (before the parent application issues).  Filing the continuation application allows the applicant to pursue different types of protection (e.g. new or additional claims that cover different inventions or different scopes of the same invention) based upon the same description and priority date(s) as the pending original application. Continuations can be strategically significant for the following reasons:

1. Patent applications are often drafted to describe multiple inventions (e.g. an apparatus, a method for making the apparatus, and a method for using the apparatus) or multiple “embodiments” (e.g. variations of a device). The Patent Office only allows a patent to have claims that cover a single invention. If an application is filed with claims that cover multiple inventions/embodiments, the Examiner may issue a “restriction requirement” so that only one invention/embodiment is ultimately covered by the patent.  Filing a continuation (or a “divisional” if the application was subject to a restriction requirement) allows the applicant to pursue coverage for different inventions/embodiments.
2. Patent applications are often drafted with claims of different scopes (e.g. broad, medium, and narrow). Although the applicant may initially seek broad protection, the Examiner may require the applicant to narrow the claims in order to obtain an allowance.  If the allowed claims are narrow, filing a continuation allows the applicant to pursue broader (better) protection.
3. Consider the competition! Filing continuation applications prevents the competition from knowing the exact bounds of coverage. If a competitor tries to produce a competing product, the existence of a continuation application would allow an applicant to draft claims that cover the competitor’s product if the competitor’s product was described in the original application.  If there is litigation, a pending continuation application provides the applicant with the opportunity to react to the lawsuit (e.g. drafting new claims to avoid newly discovered prior art).
4. Consider the future! Technology and law are moving targets.  Continuation applications allow applicants to cover future technological advances (if they are supported in the original application).  Continuation applications also allow applicants to address changes in the law (e.g. to salvage at least some protection if new laws are to the applicant’s detriment OR to seek broader protection if new laws are to the applicant’s benefit).
5. Consider buyers and licensees! If you plan to sell or license your patents, continuations can be very valuable.  Purchasers and licensees are aware of the advantages above.  For example, even if the original patent claims do not cover their products, new claims that cover their products can be drafted and pursued.

Strategic CIP Applications:

Occasionally a patent applicant makes improvements to his original invention early in the prosecution of the original patent (e.g. before the patent is examined in the PTO) and wants to obtain patent coverage for the improvements. Whether to claim priority (e.g. as a CIP) is a strategic question that depends, for example, on how closely the improved system is related to the original invention and how long the original application has been pending.

For subject matter included in the original application, the priority date of the original application is maintained. All the new subject matter would have the priority date of the filing of the new application. Claims that include both old and new subject matter would have the priority date of the new application.

The main advantages of Strategic CIPs are:

• The original application could not be used against claims in the new application (the CIP application) as prior art if the claims are only directed to the original subject. (Note: If claims include both original subject matter and new subject matter, the original application (if published or issued more than a year before the effective filing date of the introduction of the new subject matter) may be used against the CIP as prior art.)
• The original application would be kept "pending" after it issues by virtue of the new application. This would prevent having to do a separate "continuation filing."

The main disadvantages of Strategic CIPs are:

• Claims that incorporate old and new subject matter will be examined based on the filing date of the new subject matter. So an inventor's own disclosure (e.g. a public use, offer to sell, publication, or the publication or issuance of a parent application) more than one year before the filing date of the new disclosure would be prior art!
• A shortened term. When the new application issues as a patent it will have a term of 20 years measured from the filing date of the original patent (although not from the filing date of a prior provisional application).
• If the patent rules change (as they were supposed to change in November of 2007, but the rule changes were never implemented), filing a CIP at this time could limit/reduce the number of continuations/CIPs available in the future.

Request for Continued Examination (RCE):

An RCE sounds like a continuation, but it isn’t a continuation in the formal sense. When an application is “finally rejected,” one of the options available to an applicant is to pay a fee and file an RCE so that prosecution (the process of obtaining the patent) can continue. The first RCE fee is less expensive than additional RCE fees. The need to file RCEs has become very common due to a point system imposed on Examiners.