When crafting a patent strategy in the United States, one of the most powerful tools available to inventors and businesses is the continuation application. Continuation practice can dramatically extend the value and scope of patent protection. This post will provide an overview of U.S. patent continuation practice, discuss why many patent owners keep an “open” continuation on file, and explain the role and strategic advantages (and disadvantages) of a Continuation-in-Part (CIP) application.
1. What Is a Continuation Application?
In the U.S. patent system, a continuation application is a follow-on patent application that:
- Is filed before the parent patent application issues or is abandoned;
- Contains the same disclosure as the parent (i.e., no new subject matter);
- Presents different claims from the original or parent application.
By filing a continuation, an applicant can continue to prosecute claims based on the original disclosure, even after a parent application has been allowed or issued. Continuations serve as an invaluable tool for refining or expanding the scope of claims as new markets develop, new competitor products come to light, or as the applicant refines the commercial focus of the invention.
Why Continuations Are Useful
- Flexible Claim Strategy: By changing or refocusing claims in a continuation, applicants can strategically capture additional aspects of the invention that might not have been fully covered in the initial application’s claims.
- Ongoing Protection: Continuations maintain the original application’s priority date for the subject matter disclosed in the parent, which is critical if competitors release competing technology after the earliest filing date and before the filing date of the continuation.
- Response to Evolving Technology and Market Conditions: Especially in fast-moving industries (e.g., software, electronics, biotech), an invention may have several market applications not apparent — or not commercially viable — at the time of filing. A continuation keeps open the option to seek protections on evolving iterations of that invention.
Use Case: Imagine that you’ve developed a new drug class that improves outcomes in certain viral infections. The class includes ninety different variations on the molecule that fits into the drug class. Initial research shows each of the variations have different levels of efficacy against different viruses. If you could not file a continuation, you would have to seek patent protection for ninety different molecules at the same time — an incredibly expensive proposition, and one that may largely be a waste of money if clinical testing in over the next ten years shows that only a handful of the molecules are the most effective. If molecule 1 and molecule 2 treat the same infections, but molecule 2 is only 95% as effective as molecule 1, you may choose to develop (and go through the FDA process) molecule 1 as a commercial product. You patent only molecule 1. A competitor starts selling molecule 2 as a cheaper alternative to molecule 1 — even though you invented both. If you have an open continuation, you could file a new continuation claiming molecule 2. If you get the patent issued only on molecule 1 with no continuation filed, you would have no way to stop the competitor from using your invention.
2. The Benefits of Keeping an “Open” Continuation
One particularly powerful strategy is to keep at least one continuation application pending at the U.S. Patent and Trademark Office (USPTO). This is often referred to colloquially as maintaining an “open” continuation.
2.1. Adjust Claims for Unforeseen Infringers
Even after a patent has issued, situations arise in which the patent owner uncovers an infringing product or process. However, sometimes the issued claims do not line up perfectly with the infringing embodiment, making enforcement uncertain or difficult. If there is an open continuation still under examination, the owner can:
- Amend the claims in the pending continuation to better capture the alleged infringing features, provided that those features are supported by the original specification.
- Potentially secure stronger, more targeted coverage against the competitor’s products.
2.2. Extend Patent Coverage
If your invention has multiple facets or improvements, you can sequentially file continuations to protect these different aspects. Each continuation that matures into a patent can confer additional layers of protection, potentially hindering competitors from designing around your initial claims. Note that in the past, patents lasted some number of years (usually 17) from the date they issued. This is no longer the case. The Lemelson patent continuation strategy locked up bar code technology for many decades, and served as a cautionary tale against measuring patent life in this manner. Lemelson was indeed known for “submarine patents,” which took advantage of the old rule that gave a 17-year term from issue, and he kept applications pending a very long time.
2.3. Avoiding Premature Narrowing
Often during prosecution, claim amendments are made to appease the patent examiner’s requirements for allowance. While this can result in a narrower scope in the issued patent, having an open continuation lets you claim broader or alternative features that you could not secure in the parent. This keeps your protection dynamic and potentially broader overall. Although beyond the scope of this post, you should be aware that the patent prosecution history (the file at the USPTO reflecting the back and forth with the patent examiner) may narrow claims in a way not reflected in the claim language.
3. Continuation-in-Part (CIP) Applications
A Continuation-in-Part (CIP) application is another powerful mechanism in U.S. patent law. A CIP differs from a standard continuation because it can include new subject matter in addition to the text carried forward from the parent application.
3.1. How CIPs Work
- Parent Material Retains Original Priority: The original subject matter from the parent application in a CIP retains the parent’s priority date.
- New Matter Has a Later Priority: Any newly added content introduced in a CIP receives a new priority date (the filing date of the CIP), which means it is not protected as early as the original content.
- Potential Risk: Because you partially rely on the new filing date for new matter, any third-party disclosures or publications that occur between the parent’s filing date and the CIP’s filing date could potentially act as prior art for the new matter.
- Real and Tangible Cost: The expiration of a patent arising from a CIP is on the 20 year anniversary of the original filing date of the first patent application that the CIP claims priority to. If you filed the first application in 2006 and the CIP with new material is filed in 2025, the patent will expire in 2026. If he new material can stand on its own as patentable, there is a very strong case for filing a separate application for the new material that, in this example, would not expire until 2045.
3.2. Strategic Uses of a CIP
- Incremental Innovation: If an inventor refines or improves upon the technology disclosed in the parent application, a CIP can cover the incremental advances.
- Continuing Development: Fast-paced industries can see rapid improvements. A CIP allows the inventor to capture these developments without losing the benefit of the original filing date for the material previously disclosed.
- Optimizing Portfolio Coverage: While standard continuations focus solely on subject matter already disclosed, a CIP can expand your patent portfolio’s coverage to include newly invented aspects.
4. Considerations and Best Practices
4.1. Timing and Deadlines
A continuation (including a CIP) must be filed while the parent application is still pending. If the parent issues as a patent or goes abandoned before the continuation is filed, you lose this strategic option. Make sure to monitor your application’s prosecution timeline closely. Filing too close to the expiration date of a patent may change the cost/benefit analysis.
4.2. Priority Date Nuances
- Continuations: Retain the original priority date for all claims fully supported by the original disclosure.
- CIPs: Claims supported entirely by the original disclosure keep the parent’s priority date; claims relying on new subject matter get the CIP’s filing date.
4.3. Costs and Resource Allocation
Keeping a continuation pending can be invaluable, but it also comes with additional USPTO fees and attorneys’ fees. Strategies differ by industry and competitive landscape, so it is essential to balance the potential advantages with the financial and administrative costs of ongoing prosecution.
4.4. Avoiding Double Patenting Issues
When you obtain multiple patents from a chain of continuations, you might have to address double patenting concerns. Typically, filing a terminal disclaimer (where you agree the patents will expire on the same date and are commonly owned) resolves this issue, but it can limit your patent term for the later applications.
5. Concluding Thoughts
Continuation practice, when used strategically, enables patent owners to pivot, adapt, and strengthen their protection over the lifetime of an invention. By filing continuations, you can tailor claims to newly identified competitor products or refine your coverage if initial claims had to be narrowed during prosecution.
A CIP further allows you to add new subject matter while retaining priority for the original aspects of the invention, a powerful approach when improvements to an invention emerge during its development cycle.
Ultimately, the decision to keep an “open” continuation or file a CIP is highly context-dependent—factoring in budget, commercial goals, and the competitive environment. However, for many patent holders, the flexibility afforded by these strategies is more than worth the additional prosecution expenses.
If you are navigating the complex world of patent applications and would like to discuss how continuations or CIPs might fit into your IP strategy, feel free to reach out. Carefully planned continuation practice can be the key to securing robust, broad, and adaptable patent protection.
Disclaimer: This article is for informational purposes only. It is not intended as legal advice, nor does it form an attorney-client relationship. For specific questions or personalized advice, consult with a qualified patent attorney or patent agent.