Need to Add Something New to Your Patent Application? Consider a Continuation-in-Part

 Need to Add Something New to Your Patent Application? Consider a Continuation-in-Part by Pat Werschulz

{3:30 minutes to read} We’ve previously discussed 2 types of child applications in regards to patents: divisional and continuation. The third type of child application you can file is called a “continuation-in-part.”

A continuation-in-part is a little different from a continuation or a divisional in that we’re adding something new to the application. That is the rationale for naming “in-part.”

When filing a continuation, your descriptions and drawings stay the same. That’s also true with a divisional. With the continuation-in-part, however, you may be adding drawings and descriptions in addition to presenting different claims from the original case.

The tricky part of this is that, whenever you file a continuation-in-part, the new part gets a new filing date. Anything that you pull into the claim from the original application gets the original application’s filing date. If you are ever in a situation when another entity is infringing and the case goes to trial, the courts will look at the filing dates on each part to discover when the topic was introduced to the application process.

Because the patent office needs to do a new search on the new matter you are presenting, it takes as long for a continuation-in-part to get through the patent office as it does for the original case.

So why would you file a continuation-in-part and add something new to the application? Here are 3 examples of why it is a sound strategy:

  1. A continuation-in-part can be used as a tool to help get the patent granted. Sometimes, when an application is rejected, the inventor is able to figure out something that makes the application slightly different. In many cases, a modification like this will help the inventor overcome a rejection.  
  2. Another example would be if you came up with an improvement to your product. It’s very important to connect that improvement to the original application. If your original application is already issued, filing a new claim will turn your previous product into prior art, which means it will be used against you for your improvement.
  3. The third is not so much that you improved your product, but that you realized there’s a simpler way, one which your competition could use to get around your patented product. The continuation-in-part can be used within a strategy to create additional protection and close off all other avenues for the competition.

While it is best to get all improvements in before you originally file, sometimes inspiration comes late. Other times it is the marketplace that is creating a demand for you to improve your product.

As I’ve written before about child (or daughter) applications, it is important, for competitive reasons, to keep an open case at the patent office so that you can respond to changes in the marketplace.

That concludes the 3 different types of daughter applications you can file: a divisional, a continuation, and a continuation-in-part. If you have any questions about this process, please contact me.

Patricia Werschulz

Patricia P. Werschulz

Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016
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