A continuation-in-part (CIP) patent application is a unique type of application that incorporates both existing subject matter from a parent application and introduces new subject matter. By submitting new claims that pertain to the new content, inventors can claim the benefit of an earlier filing date for the disclosed information in the parent application.
Determining Priority Dates for a CIP Application
The priority dates for a continuation-in-part application are determined by the subject matter and their respective filing dates. For instance, the priority date for the subject matter included in the parent application is the filing date of the parent application. Conversely, the filing date of the continuation-in-part patent application establishes the priority date for the new subject matter.
Reasons to File a CIP Application
Filing a continuation-in-part application is an ideal option if you desire the flexibility to pursue claims solely in either the parent application or the CIP application, all while effectively managing costs. By opting for a CIP application, you consolidate your patent family into a single entity.
In contrast, filing a separate patent application for the new subject matter would require managing both the parent application’s patent family and that of the new filing.
When Not to File a CIP Patent Application
If maximizing the patent term is your primary goal, avoid filing a continuation-in-part application. When you choose a CIP application, any resulting patent’s term is calculated from the filing date of the earliest nonprovisional priority filing, rather than the CIP application’s filing date. Consequently, a portion of the patent term from the earliest nonprovisional priority filing to the CIP application’s filing date is forfeited.
Costs Associated with Filing a CIP Patent Application
Filing a continuation-in-part application incurs several costs, including:
- Filing fees, examination fees, and search fees
- Attorney’s fees, covering the time spent preparing the patent specification and claim set related to the new subject matter.
Steps to File a Continuation-in-part Application
The process of filing a continuation-in-part application involves the following steps:
- Copy and paste the written specification and drawings of the parent application into the CIP application.
- Describe how to make and use the new aspect of the invention not previously included in the parent application.
- Depict how to make and use the new aspect of the invention through drawings.
- In the application data sheet, identify the parent application and claim priority accordingly.
- Optionally, incorporate the entire contents of the parent application by reference in the first sentence of the written specification.
- Ensure the CIP application is filed during the pendency of the parent application to fulfill the co-pendency requirement.
Differentiating Continuation, Divisional, and Continuation-in-Part Applications
It’s important to understand the distinctions between these three types of patent applications:
- A continuation application involves refiling a parent application to pursue claims similar to those in the parent application.
- A divisional patent application also refiles the parent application but focuses on claims related to other aspects of the invention.
- A continuation-in-part (CIP) application retains the same specification as the parent application but introduces additional features of the invention. The claims specifically address these added features. While a CIP application is not mandatory, it can be submitted as a stand-alone nonprovisional patent application. The advantage of filing a CIP application is streamlined management of a single patent family, but the downside is a potentially shortened patent term for resulting patents.
For further information about patent applications, visit Garrity Traina.