A continuation application is a patent application filed subsequent to an earlier filed non-provisional patent application (parent) which utilizes the same disclosure (i.e., no new matter) as the parent application. Further, a continuation application is afforded the priority date of the parent application (i.e., treated as if it was filed on the date of the parent application). (see MPEP 201.07 – Continuation Application)
Requirements
There are a number of requirements which must be satisfied to properly file a continuation application, including:
- file the continuation application while the parent patent application is pending (prior to abandonment, patenting (i.e., issue), or the termination of proceedings);
- include at least one common inventor between the continuation application and the parent patent application regarding the claimed invention in the continuation application;
- ensure that support for the claims included in the continuation application is found in the parent patent application;
- present the same disclosure in the continuation application as that of the parent application (i.e., no new matter); and
- “claim the benefit of the prior non-provisional application under 35 U.S.C. 120 or 365(c).” (see MPEP 201.07)
It should be noted that as long as the foregoing requirements are satisfied, there are no restrictions on the number of continuation applications that an Applicant may file.
Advantageous Use
An Applicant may consider filing a continuation application in an instance where an Examiner in an office action has allowed a number of claims and rejected a handful of other claims. To obtain an expedient patent grant, the Applicant could choose to cancel the non-allowed claims from the patent application (to obtain a notice of allowance), and pursue the rejected (cancelled) claims in a continuation application. In the foregoing situation, the Applicant would receive a patent over the allowed claims and continue patent prosecution of the non-allowed claims in the continuation application.
Request for Continued Examination
In an instance where patent prosecution has been closed (e.g., final office action has been received) and an Applicant does not want to appeal the case to the Board of Patent Appeals and Interferences (BPAI), the Applicant may consider filing a Request for Continued Examination (RCE) instead of a continuation application to reopen prosecution and thereby allow for the presentation of new claim amendments/arguments to the Patent Examiner.
Divisional and Continuation-in-Part Applications
There are two other types of continuing applications: divisional and continuation-in-part. Divisional applications are used primarily after an Examiner has issued a restriction requirement while continuation-in-part applications are used to capture an improvement/new matter which is not described in an already filed patent application.