By Gary Shuster
A continuation application is a powerful tool in U.S. patent law. It allows you to pursue additional or modified claims from the same original disclosure, without having to start the entire patent process over, and without having to worry about things invented after your original filing date counting as “prior art.” Below is a quick overview of how continuations work and why they might benefit you.
Teaching vs. Claiming
Specification (Teach the World): Every patent application includes a detailed description (the “specification”) that explains how to make and use the invention.
Claims (Define Your Monopoly): The claims specify the exact legal protection you receive. If a feature isn’t in the claims, you don’t own exclusive rights to it — even if it’s in the specification.
The Role of Continuations
When to File: A continuation must be filed before the original (or parent) application issues. It carries over the same disclosure (text, drawings, etc.) and priority date.
Changing the Claims: The continuation gives you a chance to modify or add new claims. This can be crucial if you discover valuable aspects of your patent application that weren’t claimed initially. Because you can only pursue one invention in each patent application, if you invented the car, you would need to file separate patent applications for the muffler, the engine, the steering system, etc. These can be done via continuation practice.
Why Not Claim Everything at Once?
Cost and Complexity: Drafting numerous claims can be expensive (official fees, attorney costs) and may trigger more scrutiny from examiners.
Strategy: Many inventors opt to protect the most essential features first. Then they file continuations to capture additional features or improvements over time.
Key Takeaways
- File Early: You must submit your continuation before the parent patent issues.
- Same Disclosure: You can’t add new subject matter; the specification remains the same. If you need to add something, talk with your patent lawyer about a continuation-in-part.
- Refine or Expand: Use continuations to pursue broader or more detailed claims, and definitely make sure to cover all of the inventions you think are valuable.
- Maintain Flexibility: Continuations let you respond to new insights or market demands without losing your priority date.
Frequently Asked Questions
What is the difference between a continuation, a CIP, and a divisional?
A continuation uses the exact same specification as the parent and pursues different claims. A continuation-in-part (CIP) adds new subject matter to the specification — but only the original material gets the parent’s priority date. A divisional is filed when the patent office determines your application contains more than one distinct invention and requires you to split them up.
Can I file a continuation after my patent has already issued?
No. A continuation must be filed while the parent application is still pending — that is, before the patent issues. This is why patent attorneys sometimes file a continuation as a matter of course before allowing the parent to issue, to keep options open.
How many continuations can I file?
There is no statutory limit on the number of continuations you can file, as long as each is filed before the parent issues and each draws its claims from the original specification. Some patent families have dozens of continuations.
Want to discuss continuation strategy for your patents? Contact DeepLaw for strategic IP counsel.