CONTINUATION PRACTIC E AND REQUESTING CONTINUED EXAMINATION Document...

C ONT I NUAT I ON PR A C T I C E

A ND

R E QUE ST I NG C ONT I NUE D E X A M I NAT I ON

August 26, 2010

G eor ge W heeler M cAndrews, H eld & M alloy, L td.

C hicago, I l G W heeler @ M cAndrews-ip.com

Continuation Practice and Requesting Continued Examination George Wheeler

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T A B L E OF C ONT E NT S

I. RCE ........................................................................................................................................... 1

A. What to File..............................................................................................................2

1. Amendment ..................................................................................................3

2. IDS Citing at Least One New Reference .....................................................3

3. New Argument .............................................................................................3

4. New Evidence ..............................................................................................3

B. Must Respond Fully to Latest Action ......................................................................3

C. Fee: Basic Filing, Search, and Examination Fees ....................................................4

D. USPTO Delivery Options ........................................................................................4

E. Major Pitfalls That May Lead to Abandonment ......................................................4

1. If Request, Submission, or Fee is Not Filed ................................................4

2. If Submission is Not a Complete Response .................................................4

3. If Switching to an Independent and Distinct Invention ...............................5

4. Fix by Reviving Parent Application (If Abandoned) and Refiling ........................................................................................................5

F. Lesser Pitfalls (No Abandonment)...........................................................................5

1. If RCE is Filed Before Prosecution is Closed ..............................................5

2. If RCE is Filed After Issue Fee is Paid (Without Petition to Withdraw from Allowance)—Patent Issues ................................................5

3. If RCE is Filed During Appeal: Withdraws appeal .....................................5

4. First Action Made Final ...............................................................................5

G. Design Applications – Can’t Use RCE ....................................................................6

II. CONTINUING APPLICATIONS ........................................................................................... 6

A. Why is Priority Important? ......................................................................................7

B. When to File .............................................................................................................7

1. Best Practice: File Continuing Application When the Issue Fee is Paid ....................................................................................................8

2. Brinksmanship Approach.............................................................................9

3. When Parent Will be Abandoned ..............................................................10

C. What to File in Connection With a Continuing Patent Application ......................11

1. In Parent Application(s) .............................................................................11

2. In Continuing Application .........................................................................14


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a. Priority Claim.............................................................................................14

i. Elements of a Proper Priority Claim: Serial Number and Relationship .......................................................... 15

ii. Best Practices ............................................................................. 15

(a) Don’t be Creative ........................................................... 16

(b) Accuracy is Essential ..................................................... 16

(c) Redundancy is Your Friend ........................................... 16

iii. Examples of Proper Priority Claims .......................................... 17

b. Transmittal Letter, Application Data Sheet – Specify Continuation, CIP, or Divisional ...............................................................18

c. Complete Specification and Drawings.......................................................19

i. No New Matter (Unless a CIP) .................................................. 19

ii. Recommended Amendments ..................................................... 19

d. Claims ........................................................................................................20

e. Photocopies or Images of Executed Documents from Prior Application(s) Usually OK ........................................................................21

f. Fees: Usual Application Filing, Search, Examination, and Extra Claim Fees ........................................................................................21

g. File by Express Mail, EFS, or Hand Delivery Only ..................................22

D. Pitfalls ....................................................................................................................22

1. Lack of Copendency ..................................................................................22

2. Lack of Common Inventor .........................................................................23

3. New Matter ................................................................................................23

4. Late or Nonexistent or Incorrectly Worded Priority Claim(s)......................................................................................................23

5. Failure to Identify Relationship to Parent ..................................................24

6. Failure to Claim Priority of All Needed Parents, Grandparents, Great-Grandparents, Etc. ....................................................24

7. Missing Disclosure.....................................................................................24

8. Double Patenting Issues can Arise .............................................................25

9. Continuing Design Application Claiming Priority From Utility Parent ..............................................................................................25

E. Divisional ...............................................................................................................25

1. Timing Of Divisional – After, Responsive to Restriction Requirement ...............................................................................................26


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2. File as a Divisional, Not a CIP...................................................................27

F. Continuation ...........................................................................................................27

G. Continuation In Part ...............................................................................................31

1. Purpose – Combine Old and New Matter in a Single Application .................................................................................................31

2. Applicable Situations .................................................................................31

3. Timing ........................................................................................................33

4. What to File................................................................................................33

a. Transmittal Letter, Application Data Sheet ...............................................33

b. Need New Signed Declaration, Assignment, Power of Attorney .....................................................................................................33

c. Specification ..............................................................................................33

d. Claims ........................................................................................................34

5. Pitfalls of CIP Practice ...............................................................................34

a. Self-Collision Between CIP and an Antecedent Application by Same Inventor (In re Ruscetta) .............................................................35

b. Failure to Retain at Least One Claim Fully Supported By Each Priority Application ..........................................................................37

c. Term Loss for Later Applications ..............................................................37

d. Most Problems Not Caught by USPTO .....................................................38

6. CIP Practice Tips .......................................................................................38

a. Use New Application Deadlines for CIPs .................................................38

b. Claims Not Fully Supported by Pre-Bar Priority Application May Need to be Non-Obvious in View of Barring Priority Applications .....................................................................39


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As a United States patent practitioner, you have two tools for continuing prosecution before the Examiner, even after prosecution is closed (meaning that the application is either allowed or finally rejected). These two tools are a request for continued examination (“RCE”) and a continuing application. The three types of continuing applications are continuation applications, divisional applications, and continuation-in-part applications (CIPs).

The purpose of this paper is to explain what each of these tools is, and when and how to use it to advance the interests of your clients.

I. RCE

A Request for Continued Examination or “RCE” is a relatively new procedure created by Congress in the American Inventors Protection Act, signed into law in 1999, codified in Title 35 United States Code Section 132.1

The purpose of an RCE is to re-open and continue prosecution before the Examiner without filing a new patent application.

2 An RCE is only appropriate after prosecution is closed, and before the application is either abandoned or issued as a patent.3

Another situation calling for an RCE is that some claims are allowed, others are rejected, and you want additional claims but do not want to “divide and conquer” by issuing the allowed claims and continuing prosecution of the remaining claims in a continuing patent application. One consequence of a “divide and conquer” technique would be that more patents would issue for claims that all could be in a single patent. This would increase the maintenance fees that need to be paid to maintain multiple patents containing all the claims. In this situation you have the option of keeping all the claims in a single application and continuing prosecution to try to get more of the rejected claims allowed.

The classic situation calling for an RCE is when all the claims are rejected and you want another opportunity to amend claims, offer evidence, or submit new prior art.

Another factor leading you to file an RCE may be that you choose not to appeal the rejections based on the last claims and evidence that have been entered. Similarly, if you have already appealed, you may change course and decide to continue prosecution before the Examiner.

Another reason for re-opening prosecution is that you may have prior art that cannot be considered in the existing application because prosecution is closed. Normally, the Examiner will not consider prior art filed in an information disclosure statement after prosecution is closed. To get consideration of prior art in this situation without filing an RCE, the applicant must pay an extra fee and certify that the prior art was recently discovered. For a client of any substantial size or activity, that normally is not a wise certification to make.

Still another reason for re-opening prosecution is to fix a mistake. For example, suppose the application has been prosecuted to allowance, the issue fee has been paid, but the formal

1 See generally 35 U.S.C 132; 37 CFR 1.114; MANUAL OF PATENT EXAMINING PROCEDURE (hereinafter, “MPEP”) 706.07(h). 2 37 CFR 1.114(a); MPEP 706.07(h). 3 MPEP 706.07(h).


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drawings filed in the application belong in a different application. To avoid the embarrassment of issuing a patent having the wrong drawings, the case must be withdrawn from issue. The PTO’s preferred method for withdrawing a case from allowance is to require the applicant to file a request for continued examination, along with a petition to withdraw the application from issue. If filed in time to stop the grant of a patent, this RCE will allow mistakes such as this one to be corrected.

The above are several common situations in which you may decide to file an RCE to continue prosecution before the Examiner.

As well as knowing when to file an RCE, it is important to know when not to file an RCE. Several situations expressly call for a different approach.

First, a request for continued examination is not appropriate to continue prosecution of a design patent application. The correct tool to accomplish the same purpose in a design application is called a “continued prosecution application.”4

Since provisional applications are not examined, naturally there is no reason to file an RCE to continue prosecution of a provisional patent application.

Since most practitioners do not prosecute many design applications, and the appropriate use of continued prosecution applications in design matters is covered extensively in the MPEP, continued prosecution application practice is not addressed further in this paper.

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A request for continued examination would be very desirable to file in reexamination proceedings, but cannot presently be filed to continue prosecution of a reexamination after prosecution is closed.

6 The USPTO stated a few years ago that it was considering whether to extend RCE practice to reexaminations,7

A . W hat to F ile

but has not acted as yet.

Assuming you have resolved to file an RCE, how do you do so?

A proper request for continued examination is a one-page form,8 accompanied by the necessary fee and a “submission” that advances prosecution.9

4 See, e.g., MPEP 706.07(h).

The key to a successful RCE is the “submission,” which can be (for example) an amendment, an information disclosure statement, a new argument, or new evidence, each discussed below.

5 MPEP 706.07(h). 6 MPEP 706.07(h). 7 Patent Policy, PowerPoint® presentation by Joseph J. Rolla, Deputy Commissioner for Patent Examination Policy, January 27,

2005 (“Proposed Rule: Request for Continued Reexamination and Revision of Ex Parte and Inter Partes Reexamination Practice – provides for a request for continued reexamination practice to permit entry of submissions after a final action.”); see also “Notice of Changes in Requirement for a Substantial New Question of Patentability for a Second or Subsequent Request for Reexamination While an Earlier Filed Reexamination is Pending,” OFFICIAL GAZETTE – PATENTS, Feb. 2, 2005.

8 MPEP 706.07(h). 9 MPEP 706.07(h).


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1. A mendment

One type of submission that can be filed when a case stands finally rejected is an amendment of the claims that has not been entered before.10

If the plan is to use an amendment previously refused entry as a submission, particularly if there is more than one amendment refused entry in the case, the USPTO recommends that the amendment serving as a submission be re-filed with the RCE, rather than merely directing the Examiner to consider the amendment previously refused entry.

A common sequence is that a final rejection is received, an amendment is filed, and the Examiner refuses to enter the amendment under 37 CFR 1.116, stating in an advisory action that the amendment raises new issues. In this situation, the subject matter of the amendment previously refused entry can be submitted as a submission with an RCE and the appropriate fee. Filing the amendment as part of an RCE re-opens prosecution and allows the amendment raising new issues to be entered and considered.

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2. I DS C iting at L east One New R efer ence

But either procedure is proper.

Another appropriate submission for an RCE is an information disclosure statement (“IDS”) submitting new prior art.12 Filing the RCE re-opens prosecution and the status of the application is effectively “before first action,” so it is again proper to submit prior art without paying a fee or certifying that the prior art is newly discovered. An information disclosure statement is particularly useful as a submission after the application is allowed; in this situation the information disclosure statement itself is an adequate submission.13 If the RCE is submitted before the issue fee is paid, there is no need to petition to withdraw the application from issue.14

3. New A r gument

Similar to an amendment not previously considered, the applicant can instead submit a new argument for patentability of the claims as the “submission” accompanying an RCE. 15

4. New E vidence

Additionally, the applicant can submit new evidence of patentability of the claims (such as a declaration under 37 CFR 1.131 or 1.132) as the “submission” accompanying an RCE.16

B . M ust R espond F ully to L atest A ction

One important consideration is that the submission must be responsive to all outstanding rejections and requirements made by the Examiner in the latest Office action.17

10 MPEP 706.07(h).

Thus, one

11 MPEP 706.07(h). 12 MPEP 706.07(h). 13 MPEP 706.07(h). 14 37 CFR 1.313(a). 15 MPEP 706.07(h). 16 MPEP 706.07(h). 17 MPEP 706.07(h).


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cannot simply submit an amendment or an information disclosure statement without responding fully to the final rejection or an Ex Parte Quayle action. In short, you must make a complete response, including something new or not previously entered. If the application is allowed or no rejection is pending, of course, no response is due and it is simply necessary to submit something new.

C . F ee: B asic F iling, Sear ch, and E xamination F ees

Further, the appropriate fee must accompany an RCE. The fee is somewhat less than the basic filing, search, and examination fees for a new non-provisional patent application. Additionally, no extra claim fees are due for the RCE itself. It would appear, however, that if the submission filed with the RCE includes additional claims not previously paid for, extra claim fees will be due for them.

D. USPT O Deliver y Options

Finally, an RCE and the accompanying submission is not a new patent application, so it can be filed by first class mail with a certificate of mailing, by facsimile with a certificate of transmission, by Express Mail, or using the Electronic Filing System or EFS.

E . M ajor Pitfalls T hat M ay L ead to A bandonment

While, on the whole, RCE practice is not particularly difficult or burdensome, several mis-steps may result in abandonment of the application, necessitating a successful petition to revive the application. It is important to keep these “don’ts” in mind, as well as knowing what positive actions are required to properly request continued examination. These pitfalls are summarized at MPEP 706.07(h).

1. I f R equest, Submission, or F ee is Not F iled

The unofficial motto of the USPTO is “show me the money.” Not really, but keep in mind that a request for continued examination cannot be filed with “missing parts,” although a new patent application can. The full fee must accompany the RCE.18

2. I f Submission is Not a C omplete R esponse

If paid by check, it cannot bounce and the amount must be sufficient. If paid by a deposit account charge, the account must have adequate funds. Otherwise, an RCE has not been established and any deadlines for action continue to run until the RCE is complete.

Another pitfall for the unwary is filing a submission but neglecting to respond to other outstanding rejections and objections. This does not stop deadlines for response from running, and can lead to abandonment.19

18 MPEP 706.07(h).

19 MPEP 706.07(h).


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3. I f Switching to an I ndependent and Distinct I nvention

Still another pitfall for the unwary is filing claims directed to an independent and distinct invention with the RCE.20

4. F ix by R eviving Par ent A pplication (I f Abandoned) and R efiling

Claims filed as part of an RCE must be directed to the same invention as the claims respecting which prosecution is closed. Otherwise, the deadlines for response may continue to run, and the application may be abandoned.

You should always do your best to avoid errors such as these that lead to abandonment. But if the application does become abandoned unintentionally, there is a solution: petitioning to revive the application, paying the fee for reviving the application, and at the same time filing a proper RCE.

F . L esser Pitfalls (No A bandonment)

Not all prosecution mistakes involving an RCE lead to abandonment. Some common lesser errors, and their consequences, follow.

1. I f R C E is F iled B efor e Pr osecution is C losed

If an RCE is filed before prosecution is closed, it will not be given any effect, except that the submissions will be treated like an ordinary response to the latest (non-final) action.21

2. I f R C E is F iled A fter I ssue F ee is Paid (W ithout Petition to W ithdr aw fr om A llowance)—Patent I ssues

If an RCE is filed after the issue fee is paid, and no 37 CFR 1.313 petition to withdraw the case from issue is filed, the RCE will have no effect and the patent will issue.22

3. I f R C E is F iled Dur ing A ppeal: W ithdr aws appeal

After the issue fee is paid, it is necessary to both file an RCE and successfully petition to withdraw the case from issue in advance of the issue date to continue prosecution in accordance with the RCE.

If an RCE is filed while an appeal is pending, the effect will be to withdraw the appeal and re-enter ordinary examination.23

4. F ir st A ction M ade F inal

Moreover, after the RCE is filed the Examiner can make the next action final if the requirements for a first action final rejection are met.24

20 MPEP 706.07(h).

You might thus get only another final rejection from

21 MPEP 706.07(h). 22 MPEP 706.07(h). 23 MPEP 706.07(h).


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filing an RCE, instead of the usual first action, applicant response, and final action. As in ordinary prosecution, a final first action can be avoided by responding to a final action with new claims or evidence, getting an advisory action refusing to enter the amendment or other response, then re-filing the new claims or evidence as part of the submission accompanying an RCE.

G . Design A pplications – C an’ t Use R C E

Finally, remember that RCEs cannot be used to continue prosecution of design patent applications.25

Thus, a request for continued examination or RCE is an everyday tool you can use to re-open and continue prosecution after it is initially closed. It must be accompanied by a submission, which must include a full response to any outstanding rejections, and the necessary fee. By mastering some details of RCE practice, you can avoid the pitfalls and obtain the advantages of continuing prosecution.

A continued prosecution application or a regular continuation must be used to continue prosecution of a design patent application. You can master the arcane and unique requirements of continued prosecution applications, which is recommended only if design patent applications are important in your practice. Or, if you seldom file design applications, you may want to consider simply continuing prosecution in a design application by filing a continuation application. This will cost you some prosecution delay but avoid many pitfalls of continued prosecution applications.

II. CONTINUING APPLICATIONS

While an RCE is commonly the procedure needed to continue prosecution after it has initially been closed, an RCE is not always appropriate. Some situations are more appropriately addressed by filing a continuing patent application.26

A continuing application is a new, complete application derived from a previous or “parent” application. MPEP 201.07. Most of the requirements for successful use of a continuing application relate to the need to claim priority properly to get the benefit of the earlier filing date of the parent or earlier ancestor patent application under 35 U.S.C. §120.

There are three types of continuing patent applications: a continuation application, a divisional application, and a continuation-in-part application. Each has a different role to play, but all three types of continuing applications have many aspects in common.

I will first describe the common characteristics and requirements of all continuing applications. I will then discuss the uses and relative merits of a continuation, a divisional, and a continuation-in-part patent application.

24 MPEP 706.07(h). 25 MPEP 201.06(d). 26 See generally 35 U.S.C. 120, 121; MPEP 201.07.


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A . W hy is Pr ior ity I mpor tant?

Why is it commonly crucial to obtain the benefit of the earlier filing date of the parent application? The reason is simple. The earlier the filing date of a patent application, the less prior art it faces. Filing a patent application on a certain date excludes from the prior art all references that are effective after that certain date. You thus want the earliest possible filing date, from the point of view of avoiding all the references that can be avoided.

If in a continuing patent application you successfully claim priority to an earlier-filed parent patent application, you get the benefit of the filing date of the parent application in the continuing application.27

Moreover, chains of priority claims are possible. For example, if a first or grandparent patent application is filed, and before it issues a parent application is filed properly claiming the priority of the grandparent application under 35 U.S.C. §120, then a third “child” application is filed properly claiming the priority of both the parent and grandparent applications under 35 U.S.C. §120, the child application is entitled to the priority of the grandparent application. Long chains of priority applications extending over as much as 20 years can be developed under current law, and in this case the priority claims can antedate a large body of references.

This means that the later application is treated as though it actually was filed on the filing date of the parent application. This is why you generally want to claim the priority of an earlier application, when available.

Often, when deciding whether to claim priority, you do not know whether difficult prior art references will turn up, even after years of prosecution. U.S., European, PCT, and many other patent applications filed before your patent application is filed are kept secret for at least 18 months before they are revealed by pre-grant publication. Other prior art results from the publication of your own patent applications early in the chain of priority. Still other prior art is remote, or published in an obscure language, or simply not accessible to you. So you are usually well advised to obtain the earliest possible effective filing date for your patent applications.

B . W hen to F ile

When can a continuing patent application can be filed, to enable it to claim the priority of its parent patent application under 35 U.S.C. §120? The basic rule established by 35 U.S.C. §120 is that the continuing application must be filed after the filing date of the parent and no later than the issue date (if issued) or the last date of pendency (if abandoned) of the parent application.

If the parent application will issue as a patent, the last date on which a continuing application can be filed to obtain the benefit of the parent is the exact issue date of the parent application (always Tuesday).28

27 There is a countervailing factor, however. Any patent issuing from a patent application filed on or after June 8, 1995, will expire 20 years after the earliest claimed priority date. Claiming the priority of a parent application under 35 U.S.C. §120 thus gives the continuing application the expiration date, as well as the filing date, of the parent application. I will return to this point when discussing continuation-in-part patent applications, which in some instances do not benefit from the priority of the earlier application but are burdened by its expiration date.

28 201.11 MPEP.


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1. B est Pr actice: F ile C ontinuing A pplication W hen the I ssue F ee is Paid

The USPTO does not grant a patent without sending an advance notice, in the form of an issue fee receipt. The issue fee receipt specifies the patent number and issue date of the patent-to-be. But the issue fee receipt is sent from the USPTO to the applicant or her representative. Now and then, the issue fee receipt does not arrive until after the patent issues. Moreover, it is not enough for the USPTO to send an issue fee receipt on time; you need to receive it and remember that a continuing application is to be filed. If something else comes up and the need for a continuing application is not acted on, the parent may issue without the continuing application being filed. If prosecution has changed hands, the new attorney may never receive the notice, even though it was sent on a timely basis.

Should the parent issue before the continuing application is filed, you have a problem you may not be able to solve. The USPTO will not “un-issue” the parent so you can file a continuing application. Failure to file a continuing application is not an “error” respecting prosecution of the parent application, so the parent cannot be reissued to restore it to pending condition to allow the filing of a continuing application claiming its priority. By allowing the parent to issue before you file a continuing application, you may have broken the chain of priority irreparably. Any additional subject matter you have to claim cannot have a priority date earlier than its filing date.

Because breaking the chain of priority may cause your client to lose crucial rights, the best practice is to adopt as a habit a procedure that will never create this problem for you: file any needed continuing patent applications no later than the date on which you pay the issue fee.29

Filing a continuing application no later than the date on which you pay the issue fee is a good idea. When you receive a Notice of Allowance, you have three months to pay the issue fee. The patent will not issue until you perform the affirmative act of paying the issue fee. If you pay the issue fee, the patent will issue at some time after it is paid. If you don’t pay the issue fee, the patent will not ever issue. So the fate of the parent application is securely in your hands for the three months between the mailing date of the Notice of Allowance and the deadline for paying the issue fee.

Additionally, receiving a Notice of Allowance is very good news for both you and your client whose ship has come in. You surely will tell the client this good news. When you do so, you should tell the client when the issue fee is due, and request instructions to pay it. Having opened this line of communication, you should also advise your client that a continuation application should be filed to protect her rights if she still has claims that have not been prosecuted yet. You can then get instructions whether to file a continuing application from the client at the same time you get instructions to pay the issue fee in the parent. You can then file the continuing application, file the issue fee in the parent application, perhaps take care of other matters, and put the file away. You don’t need to worry about maintaining copendency, even if you fail to get the issue fee receipt on time, because the necessary steps have already been taken to maintain your chain of priority.

29 201.11 MPEP.


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So make it your normal practice to determine whether to file a continuing application, get the client’s instructions, and act on those instructions no later than the date on which you pay the issue fee.

2. B r inksmanship A ppr oach

Of course, life isn’t always that simple. Even if you are diligent in getting the client’s instructions, the client may change his, her, or its mind later, and tell you very late in the game that a continuing application should be filed. Or one may slip through the cracks. It is not too unusual for a client to defer spending the money for the government fees and your charges to file a continuing application until the next accounting period. Or a lot of other things can and do happen.

If you face this problem, what is the last day you can file a continuation when its parent application is issuing as a patent? The MPEP seems to provide a clear answer to this question:

If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application.30

It is possible, however, that the day the parent patent issues is one day too late to claim its priority. The Federal Circuit recently suggested this could be an open question, stating: “We therefore leave for another day whether filing a continuation on the day the parent issues results in applications that are co-pending as required by the statute.”

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An argument that one application filed on the issue date of another does not establish co-pendency can be made by comparing Section 201.11 (II)(B) of the MPEP:

If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues

with 35 U.S.C. 120, which states in relevant part,

on the prior application,

An application for patent …shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application

The MPEP finds copendency for an application filed

….

on or before the date the parent issues, while the statute suggests copendency only for an application filed before

It is thus strongly suggested that you file a continuation application at least the Monday BEFORE the patent issues (since all patents issue on Tuesday in the US). You can always

the date the parent issues.

30 201.11 (II)(B) MPEP. 31 Encyclopaedia Britannica, Inc. v. Alpine Elec., Inc., 2010 U.S. App. LEXIS 12485 at *17 (Fed. Cir. Jun. 18, 2010).


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abandon an emergency Monday filing, but you cannot un-issue the parent patent to establish co-pendency with a continuation filed even a day too late.

3. W hen Par ent W ill be A bandoned

The other possibility, if the parent application is not issued as a patent, is that the parent application will be abandoned. If that is the fate of the parent, any continuing application claiming its priority needs to be filed before the parent application is abandoned.

The most common form of abandonment of the parent is abandonment by failing to respond to the last Office action in the parent application. If you are filing a continuing application, you may also deliberately abandon the parent application. In either case you can continue prosecution in a continuing application filed while the parent application is still pending.

To maintain copendency with a parent application that requires a response by a certain deadline, the continuing application must be filed by that certain deadline. That seems simple, and often is, but this simple rule has a few details that need to be remembered.

One such detail involves a deadline in the parent application that can be extended retroactively by buying an extension of time, such as the deadline for responding to an Office action. If you actually do buy an available extension of time in the parent application, the date of its abandonment is deferred to the day after the new deadline with the extension of time.32

If you do not buy an extension of time, however, the fact that you could have done so has no effect on the original date of abandonment. Or if you buy a one-month extension of time, even if a three-month extension would have been available, the unrealized possibility of a three-month extension of time has no effect on the date of abandonment.

This is so even though you do not file the needed response in the parent application. For example, if a response to an Office action is due January 15, and you never respond but do buy a three-month extension of time, assuming April 15 falls on a business day, the continuation must be filed on April 15.

Also remember that not all deadlines for response are extendable. Notably, you cannot extend the deadline to pay the issue fee. Thus, the application always becomes abandoned if the issue fee is not paid by the original three-month deadline, and a continuing application filed after the three month deadline is not copending with the abandoned parent.

Another thing you should know is that if the final date for responding falls on a weekend or holiday recognized by the USPTO, the deadline carries over to the next business day in the USPTO. If the deadline for response in the parent application carries over to a Monday, the continuing application can be filed on Monday as well, and will be co-pending.

But there is no corresponding rule that the date of abandonment falling on a weekend or holiday carries over to the next business day. If a response due on a Friday is not filed, the application is abandoned on Saturday. This date of abandonment does not carry over until Monday; it’s

32 201.11 MPEP; 711.02(c) MPEP.


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Saturday. Even if you file the continuing application on Saturday, it’s too late to maintain copendency.

In short, if you have a response due on Friday, but you plan to file a continuing application instead of a response, your continuing application must be filed on Friday—on the deadline for response and before the date of abandonment.

One way to remember this is to commit to memory that copendency requires a continuing application to be filed before the parent issues as a patent or by the deadline for filing a response required in the parent application. Forget about the date of abandonment, as it is one day too late to maintain copendency.

Another special rule for maintaining copendency applies when you lose an appeal and choose to continue prosecution in a continuing application. If the Board of Patent Appeals and Interferences (“the Board”) affirms the Examiner and no claim stands allowed, the application is abandoned the day after the time for appeal to the Federal Circuit (or file a complaint seeking de novo review in district court) expires—two months after the mailing date of the Board decision.33

There are a number of special cases of abandonment, too numerous and unusual to explore in detail here. See generally 711 MPEP and its sub-parts for a discussion of these.

Finally, although unintentionally abandoning a parent application without filing any needed continuing application is a serious error, it commonly is easy to restore copendency with a later-filed continuing application.34

C . W hat to F ile in C onnection W ith a C ontinuing Patent A pplication

Assuming the parent was unintentionally abandoned before filing a continuing application, copendency can be restored by reviving the abandoned parent application, so it is once again pending at some time while the continuing application is pending. This does cost a fair amount of money, and is embarrassing, but at least you don’t lose any rights irrevocably.

In the preceding section we covered when you need to get a continuing application on file. Now consider what you need to prepare and file to start a continuing patent application on its journey through the USPTO. This again applies to all three types of continuing applications: continuations, divisionals, and continuations in part.

1. I n Par ent A pplication(s)

One point that is a little difficult to understand at first is that attention must be paid to the parent application while it is pending, to pave the way for a proper claim to priority in the continuing application.

33 37 CFR 1.197; 711.02(c) MPEP. 34 As explained above, it is not possible to restore pendency with the parent application after it has issued as a patent.


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The priority of the parent application cannot be claimed unless at least the basic filing fee has been paid35 and all other requirements to receive a filing date have been met36

As discussed previously, if you need to defer the date of abandonment of the parent application by filing a petition and fee for extension of time to allow copendency with the continuing application, this must be filed in the parent application.

in the parent application.

37

You can claim priority to a PCT application in a continuing United States patent application, providing the PCT application meets two requirements. First, analogous to the situation where the parent is a United States patent application, the parent application must be entitled to a filing date under PCT Article 11.

38 Second, the PCT application must designate the United States.39

Patent attorneys often talk about a “chain” of priority, but if there are multiple links in the chain the required “chain” is more of a web. Each application in the chain must recite every preceding application in the chain in its claim to priority.

Otherwise, it doesn’t count as a United States application, and 35 USC 120 does not apply. Interestingly, you do not need to enter the United States national phase with the PCT application to claim its priority in a continuing United States application, provided the other requirements above are met.

40 Under current law, “There is no limit to the number of prior applications through which a chain of copendency may be traced to obtain the benefit of the filing date of the earliest of a chain of prior copending applications.”41

For example, consider the following chain of five applications named A, B, C, D, and E, A being the first and E being the last:

A – B – C – D – E

Assume you want to claim the priority of application A in application E. To have a proper claim of priority in application E extending all the way back to application A, application E must claim the priority of application D, and application E must also state that application D claims priority to application C, application C claims priority to application B, and application B claims priority to application A. In addition, application D must also state that it claims priority to application C, that application C claims priority to application B, and that application B claims priority to application A. Still further, application C must also state that it claims priority to application B, and that application B claims priority to application A. Finally, application B must also state that it claims priority to application A. In other words, to claim in application E the priority of application A, each application after application A needs to directly claim priority to its predecessor and state that its predecessor claims priority to each earlier predecessor.

35 See MPEP 201.03. 36 37 C.F.R. 1.78(a)(1)(ii) 37 201.06(c) MPEP. 38 37 C.F.R. 1.78(a)(1)(i) 39 37 C.F.R. 1.78(a)(1)(i). 40 See, Encyclopaedia Britannica, Inc. v. Alpine Elec., Inc., 2010 U.S. App. LEXIS 12485 at *15 (Fed. Cir. Jun. 18, 2010). 41 See In re Henriksen, 399 F.2d 253, 158 USPQ 224 (CCPA 1968); 201.11 MPEP.


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The criticality of making all of these priority claims in every application up the chain is shown by a recent Federal Circuit decision, Encyclopaedia Britannica, Inc. v. Alpine Elec., Inc., supra, 2010 U.S. App. LEXIS 12485. In that case, Encyclopaedia Britannica’s ’018 and ’437 patents themselves (E) properly claimed a chain of Section 120 priority as follows:

• E is a continuation of application No. 10/103,814 (D), filed on Mar. 25, 2002,

• which is a continuation of application No. 08/202,985 (C), filed on Feb. 28, 1994,

• which is a continuation of application No. 08/113,955 (B), filed on Aug. 31, 1993,

• which is a continuation of application No. 07/426,917 (A), filed on Oct. 26, 1989.

In Encyclopaedia Britannica, Application B was filed on the issue date of Application A42 – the last possible day according to the MPEP.43 Application B was filed without a declaration signed by the named inventors, without any fee, and was missing its first page entirely. 44 Application B contained no priority claim or reference to Application A. 45 Instead of supplying these omitted items, Encyclopaedia Britannica allowed this application to go abandoned and filed continuation application C claiming the priority of Applications B and A.46

The District Court ruled, and the Federal Circuit affirmed, that Application B failed to satisfy the requirements of 35 U.S.C. § 120, so it was not entitled to the priority date of Application A.

47 Patents E were anticipated by Encyclopaedia Britannica’s corresponding foreign patent application – WO91/06916, published on May 16, 1991.48

The Federal Circuit held:

We conclude that § 120 requires each application in the chain of priority to refer to the prior applications. Because the ’955 application [B] failed to specifically reference the earlier filed ’917 application [A], it is not entitled to the priority date of the ’917 application [A] under § 120. Because the ’955 application [B] did not claim priority to the ’917 application [A], the patents in suit [E] cannot claim priority to the ’917 application through the ’955 application [B].49

So what does this mean while application D is pending and you are preparing to claim its priority in continuing application E? It means that you must be sure all of the priority claims have been made in each preceding application, all the way back. If possible under 35 USC 120, fix any missing priority claims by obtaining a certificate of correction or taking other appropriate action.

42 Encyclopaedia Britannica, supra, 2010 U.S. App. LEXIS 12485 at *4. 43 201.11 (II)(B) MPEP. 44 Encyclopaedia Britannica, supra, 2010 U.S. App. LEXIS 12485 at *4. 45 Encyclopaedia Britannica, supra, 2010 U.S. App. LEXIS 12485 at *4. 46 Encyclopaedia Britannica, supra, 2010 U.S. App. LEXIS 12485 at *6. 47 Encyclopaedia Britannica, supra, 2010 U.S. App. LEXIS 12485 at *7-8, 17. 48 Encyclopaedia Britannica, supra, 2010 U.S. App. LEXIS 12485 at *2-3. 49 Encyclopaedia Britannica, supra, 2010 U.S. App. LEXIS 12485 at *18.


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2. I n C ontinuing A pplication

Having prepared the antecedent application(s) to support a claim of priority and to maintain copendency, what do you file in the USPTO to establish a continuing patent application? The basic answer is that you file all the things needed to establish any new patent application, plus doing what is necessary to perfect your claim of priority. First consider the claim for priority because it is the most important part to get right the first time, after meeting the requirements to obtain a valid filing date for the continuing application.

a. Pr ior ity C laim

Every continuing patent application needs a claim to priority. The priority claim should be the first sentence(s) of text of the specification,50 preferably under the subhead, “Cross-reference to Related Applications.” The priority claim can instead be provided in an Application Data Sheet,51

The USPTO will accept a priority claim provided either in the first part of the specification or the application data sheet, which is regarded as part of the specification. The USPTO has indicated that if the claim to priority is not provided in the specification, it will not be printed in column 1 of the specification. It will only appear on the front cover of the patent, as taken from the Application Data Sheet. The “belt and suspenders” approach of putting the priority claim in both the specification proper and the Application Data Sheet is recommended, just in case an error is made in one or the other.

or can be both in the specification and in the Application Data Sheet.

Additionally, while a claim to priority can be provided in an amendment, whether presented at the time the application is filed or a few months later, the best practice is to recite it in the text of the specification, to be sure it is printed in the application as published and in the patent as issued.

Finally, a claim to priority in the specification should appear in the first sentence of the specification, without any other matter separating the priority claims. For example, statements of incorporation by reference should follow all the priority claims, not be interspersed among them.

When must a claim to priority be made? For applications filed on or after November 29, 2000, 35 USC 120 requires the claim for priority to be made in an application while the application is pending.52

For applications filed on or after November 29, 2000, the priority claim must also be filed within four months after the filing date of the application or 16 months of its priority date, whichever is later.

Earlier applications can be corrected even after the patent issues, by requesting a certificate of correction adding the claim to priority.

53 Unlike the pendency requirement, if this 4/16-month time limit is unintentionally missed, a late claim to priority can be made by filing a petition and paying a substantial fee.54

50 37 CFR 1.78(a); 201.06(c) MPEP.

51 37 CFR 1.78(a); 201.06(c) MPEP. 52 35 USC 120; 37 CFR 1.78(a)(2)(ii); 201.11 MPEP. 53 37 CFR 1.78(a)(2)(ii); 201.11 MPEP. 54 37 CFR 1.78(a)(3); 201.11 MPEP.


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i. E lements of a Pr oper Pr ior ity C laim: Ser ial Number and R elationship

A priority claim to a non-provisional patent application under 35 USC 120 is only recognized as such by the USPTO if it includes, at a minimum, the complete serial number and the exact relationship between the claiming application and the priority application, and between each priority application and its predecessor, back to the first application in a chain of priority claims.55

The complete serial number can be provided in one of three forms:

.

56

• the series code and six-digit serial number – like 11/123,456 (the “11” is the series code and the remainder of the number is the six-digit serial number);

• the six-digit serial number and the exact filing date; or

• the application number and filing date of a PCT application to which priority is claimed.

The exact relationship means that the claim to priority must state whether the continuing application is a continuation, a divisional, or a continuation-in-part of the parent application.57 These three categories are the only available relationships that can be specified, and only one of them can properly be specified to identify the relationship between two particular applications.58

It is customary, and recommended, to include in a priority claim the series code and six-digit serial number, the filing date, and the current status (“now pending,” “now abandoned,” or “now U.S. Pat. No. 7,000,001”) of each prior application in the priority claim.

59

Remember that the status of a prior application necessarily changes after the continuing application is filed. The prior application must be pending at the time the continuing application is filed, to maintain copendency. Ultimately, the prior application must be either issued or abandoned, as these are the only two possible fates of a United States patent application. Usually, the prior application attains its ultimate status while the continuing application is still pending, in which case it is customary to amend the priority claim to indicate the ultimate fate of the priority application.

This goes a little beyond what is absolutely necessary according to the statute.

ii. B est Pr actices

Since a priority claim must be made while an application is pending, should be made within a few months after the continuing application is filed, and is only effective if it unambiguously and

55 201.11 MPEP. 56 201.11 MPEP. 57 201.11 MPEP. 58 201.11 MPEP. 59 201.11 MPEP.


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accurately identifies each priority application, several “best practices” are suggested for making a priority claim.

(a) Don’ t be C r eative

First, this is not the place to show off your creative writing skills. The claim to priority must state the required information, and should state the customary information, in a uniform, recognizable format, without further elaboration. If surplus information is provided before or between any priority claims, the USPTO may not recognize the later claims to priority. Multiple priority claims can be stated in multiple sentences, but they should be the first sentences after the title in the specification, with no separation by other matter.60

(b) A ccur acy is E ssential

Second, this is the place to show off your proofreading and fact checking skills: accuracy is essential in a priority claim. The best practice is to look up each priority application and verify that its application number, filing date, relationship, and status correspond to the statements made in the priority claim. Now that all the priority applications are available at your desktop on Private PAIR, and usually Public PAIR too, and every patent to which priority can usefully be claimed (i.e. all patents applied for within the last 20 years) is on the USPTO Patents Database, there is no excuse for shirking this fact checking. Nor is it necessarily a good idea to rely absolutely on an administrative assistant or paralegal who is not signing the application. Theirs should be an additional pair of eyes to check priority claims, not the only pair of eyes to do so. Engage your eyes as well.

One way to delegate the work without ducking final responsibility is to have someone else print out the front pages of the published applications and patents to which priority is claimed, or the filing receipts and cross-reference sections of pending unpublished applications to which priority is claimed. Assure yourself by looking at these copies that the numbers in the specification of the continuing application are correct by reference to these official, readily available sources of information.

As well as checking these facts at the time of filing, re-check them when reviewing the application before payment of the issue fee. Remember that you cannot add a new claim to priority after the application issues as a patent.

(c) R edundancy is Y our F r iend

Finally, some redundancy is your friend in a priority claim. For example, if the priority claim states both the series code and the filing date, and if one of them is wrong, the other may be right, and save the day by unambiguously identifying the priority application. Another example is that, if you amend the statement of status of the priority application to recite its patent number as issued, even if the serial number was wrongly stated in the priority claim, the correct patent number can preserve the unambiguous reference to one priority application. That is why the best

60 201.11 MPEP.


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practice is to provide all customary information in your priority claims, going beyond the minimum legal requirements.

iii. E xamples of Pr oper Pr ior ity C laims

Here are several specific examples of how to make a priority claim.61

The minimum acceptable priority claim to a single priority application would read as follows: “This application is a continuation of Application No. 11/123,456.”

You should master this information early in your career, so it becomes second nature.

The recommended best practice for a single priority claim, however, is to follow this format:

This application is a continuation of Application No. 11/123,456, filed January 3, 2006, now U.S. Pat. No. 7,001,345. The patent application identified above is incorporated here by reference in its entirety to provide continuity of disclosure.

The minimum acceptable multiple priority claim would follow this format: “This application is a continuation of Application No. 11/123,456, which is a continuation-in-part of Application No. 10/987,654, which is a divisional of Application No. 10/876,543.”

The recommended best practice for a multiple priority claim is to follow this format:

This application is a continuation of Application No. 11/123,456, filed January 3, 2006, now U.S. Pat. No. 7,001,345, which is a continuation-in-part of Application No. 10/987,654, filed January 5, 2005, now pending, which is a divisional of Application No. 10/876,543, filed August 1, 2003, now abandoned. Each patent application identified above is incorporated here by reference in its entirety to provide continuity of disclosure.

You can claim 35 U.S.C. 120 priority to a PCT application in a regular United States application filed between the PCT application’s international filing date and the thirty-month deadline for entering the national phase in the United States. During this period, you can claim its priority as follows:

This application is a continuation of International Application No. PCT/DE95/---, filed --.62

This assumes that the PCT application designates the United States.

63

61 201.11 MPEP.

Nowadays, since country designations are automatic, usually a PCT application filed in any PCT Receiving Office worldwide does designate the United States.

62 201.11 MPEP. 63 35 USC 365(c).


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If you are too late to claim priority to the PCT application itself (because you are past the last day of pendency of the PCT application—thirty months after its first priority date), but the United States national phase of the PCT application has been entered, the priority claim to the PCT United States national phase application should be made as follows:

This application is a continuation of U.S. Application No. 08/--, which is the National Stage of International Application No. PCT/DE95/---, filed -- 64

The preceding priority claims are all made under 35 USC 120. There are other types of priority claims, made under 35 USC 119, to a United States provisional application or a Paris Convention priority patent application. Paris Convention priority claims are beyond the scope of this topic, except to say that Section 119 priority claims have different formats and normally are not placed in the specification. I will discuss Section 119 provisional patent application priority claims, however, as they are commonly combined with 35 USC 120 priority claims.

Priority only to a single provisional United States patent application should be claimed as follows.

This application claims the benefit of U.S. Provisional Application No. 60/---, filed --- 65

Or, if you filed a provisional Application A, then claimed its priority in a non-provisional parent Application B under 35 USC 120, and are now claiming the priorities of both prior applications in a continuing Application C, the provisional application priority can be claimed at the end of the chain of Section 120 priority claims in Application C, thus:

This application [C] is a continuation of Application B, filed January 3, 2006, now pending, which claims the benefit of U.S. Provisional Application A, filed March 1, 2005.

The relationship statement (i.e., continuation, divisional, or continuation-in-part) is not appropriate in a claim of priority of a provisional application. In fact, a continuing relationship should not be specified when the priority of a prior provisional application is being claimed under 35 U.S.C. 119(e). The USPTO claims that reciting a continuing relationship to a provisional patent application in a non-provisional application could have the effect of reducing the term of the patent issuing from the non-provisional application. The basis for this theory is that the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).

b. T r ansmittal L etter , A pplication Data Sheet – Specify C ontinuation, C I P, or Divisional

The parts of a continuing application, like any patent application, should be filed with a transmittal letter, or Application Data Sheet; preferably using the USPTO forms. You can also

64 201.11 MPEP. 65 201.11 MPEP.


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use the transmittal form as a checklist to see if you have all the required information and documents.

c. C omplete Specification and Dr awings

Your continuing patent application is a complete patent application in its own right, and must comply with the requirements of Title 35 of the United States Code (USC) and Title 37 of the Code of Federal Regulations (CFR) for any patent application. For example, it must have a specification, claims, drawings if necessary for the subject matter, a declaration by the inventors, and filing, search, and examination fees. But you have a big head start because you normally will have most of these documents in your word processor and in your paper or image file of the parent application.

i. No New M atter (Unless a C I P)

First, even on the filing date of a continuation or a divisional continuing application, you are prohibited from adding new matter that was not filed in the parent application. (This rule does not apply to a continuation-in-part patent application, identified as such, which can and almost always does contain new matter added on its filing date.) But this does not mean that you should simply file the parent specification again, without any changes, in a continuing application.

Awhile back, for certain continuations you were actually required to file a photocopy of the complete parent application, precisely as filed, along with a preliminary amendment filed on the same day making any desired amendments.66

ii. R ecommended A mendments

This created a lot of confusion because applicants were filing a specification with the docket number, priority claim, claims, and other parts that were not correct for the continuing application. If these parts got separated from the transmittal, they often ended up in the wrong file in the USPTO. Also, sometimes the preliminary amendment was overlooked and the original claims from the parent application were examined again, essentially wasting an Office action by duplicating work.

To avoid these problems today, it is highly recommended that you do not simply file an exact duplicate of the parent application and a preliminary amendment making the necessary revisions. Even for a continuation or divisional patent application that can contain no new matter, it is highly recommended to modify the continuing application as follows.

Different attorneys and organizations use different docket numbering systems, but any system should have a different alphanumeric identifier for a parent application and its continuing application. The identifier should appear on at least the first page of the specification, for easy identification. In the continuing application, change the docket number to the appropriate number for that application.

66 Former rule 37 CFR 1.60.


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If filed by Express Mail, the specification is required to identify the Express Mail label number and the mailing date.67

The title and Summary of the Invention sections should reflect the broadest claims currently in the application. If the broadest claims in the continuing application are different from those of the parent application, the title and Summary section can be modified accordingly.

Plainly, the continuing application should not bear the label number and filing date of its parent application, so change or remove these numbers to suit the mode of filing the continuing application.

68

For example, assume the parent application claimed a method of making widgets and the resulting widgets. The title of the parent might be “Methods of Making Widgets and the Resulting Widgets,” and the summary of the parent should identify both the claimed widget and the claimed method of making widgets. Now assume a restriction requirement was made in the parent application, and the applicant elected the widgets and canceled the method claims. Finally, assume you are now filing a divisional application to prosecute the method claims. Both the title and the summary of the specification (as well as the claims, discussed further below) should be modified to identify the method and not the widgets.

You need not, however, modify the Abstract, as the Abstract is supposed to summarize the disclosure, as opposed to the claims.

Also, you normally should not abridge the detailed description in the application as filed. If you do so after the application is filed, however, you will not cause a lapse of disclosure, as might result if the application as filed omitted disclosure.

It is also highly recommended, when preparing a continuing application, to incorporate by reference in the continuing application all preceding applications to which it claims priority. This is done to allow the application to correct lapses of disclosure—in essence, accidentally leaving out of the continuing application something disclosed in one of its predecessors.69

An incorporation by reference cannot, however, be added to a pending application after its filing date, because it is itself new matter.

See also 37 CFR 1.57 and 201.17 MPEP, which provide the same protection to a limited degree automatically, for applications mentioned in the priority claim. The opportunity to incorporate priority applications by reference is an excellent reason for putting the priority statement itself in the specification, and not just in the application data sheet.

70

d. C laims

That is why the incorporation by reference statement from the parent application should be updated to include the parent application.

Any continuing application, even a continuation in part, must claim one or more inventions fully described in the parent and any earlier priority applications in the manner described by 35 USC

67 37 CFR 1.10. 68 201.06(c) MPEP. 69 201.06(c) MPEP. 70 201.11 MPEP.


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112.71 This means that the parent application must furnish an enabling disclosure and written description of the invention claimed in the continuing application, including the best mode.72

If the application is a continuation-in-part, it should also disclose some new matter, and it can but does not need to additionally claim an invention not supported in the parent application.

For a continuation or divisional application, the best mode does not need to be updated in the continuing application to reflect any change in the best mode contemplated at the time the continuing application was filed. For a continuation-in-part application, however, the best mode disclosure must be updated if the best mode has changed or been supplemented.

Another important amendment in the continuing application is to remove claims that are not currently being pursued, for example because they are already patented, being pursued in another application, or not to be pursued at all. The claims should also be re-numbered as an unbroken series starting with “1.”73

For one thing, this modification of the claims will prevent the payment of extra claim fees for claims that will be dropped anyway. Another reason to amend the claims is so the published application will have all the claims, and only the claims, that are being pursued as of the filing date of the continuing application.

Thus, assume the parent application had 20 claims, claims 1-15 were allowed, and claims 16-20 were canceled. In the continuing application pursuing former claims 16-20, they should be renumbered as 1-5 if you want to present these claims again as the first claims in the continuing application.

e. Photocopies or I mages of E xecuted Documents fr om Pr ior A pplication(s) Usually OK

Although the specification and claims should be revised as appropriate in the continuing application, the formal papers (inventors’ declaration,74

f. F ees: Usual A pplication F iling, Sear ch, E xamination, and E xtr a C laim F ees

assignment if needed, Power of Attorney, and 37 CFR 3.73(b) Statement) can be photocopies or images of the papers filed in the parent application, for continuations and divisionals. A different rule pertains to continuations in part, for which all of these documents generally must be executed again. Finally, if a continuation or divisional application names new inventors not named in the parent application, a new declaration and (if appropriate) assignment must be prepared and signed.

A continuing application requires application filing, search, examination, and extra claim fees determined by the same rules as for an original patent application. These fees are due even if the claims were restricted out of the parent application after the initial fee for them was paid.

71 37 CFR 1.78(a)(1); 35 USC 120; 201.07 MPEP. 72 37 CFR 1.78(a)(1); 35 USC 120; 201.07 MPEP. 73 201.06(c) MPEP. 74 37 CFR 1.63(d)(1); 201.06(c) MPEP.


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g. F ile by E xpr ess M ail, E F S, or H and Deliver y Only

The same rules apply for delivering a continuing patent application to the USPTO as for delivering an original patent application. Electronic filing (EFS) is now a viable option, and you should use it whenever available. Express Mail filing procedure and hand delivery are also available, though these may be expected to diminish in importance as EFS becomes nearly universal. But you should still know how to file an application by hand delivery if you are close to the USPTO, or by Express Mail if you are further away. Sometimes EFS isn’t working, you cannot establish an Internet connection, etc. To have this capability you need to pay attention to the deadlines for depositing Express Mail or for hand-delivering a patent application to the USPTO. In a large metropolitan area, you may have counter service (i.e. a postal clerk to receive Express Mail) up to midnight. In other areas you may not. Note, however, that putting Express Mail in a pick-up box does not guarantee that its all-important “date-in” notation will be the day you put it in the box.

One delivery method you cannot use is facsimile, as for any new patent application. The USPTO will refuse to grant a filing date to a continuation application filed by facsimile.

You actually can file a patent application by first class mail, but its filing date is the date it is received, not the date it is sent. A certificate of first class mailing has no effect.75

The rule is simple: don’t use facsimile transmission or first class mail to file a new patent application, whether an original application or a continuing application!!

So you lose some time, and you cannot know the filing date for a month or so after you file it. If the US Postal Service never delivers it, it will never be on file, and in many cases you cannot rectify this problem.

D. Pitfalls

1. L ack of C opendency

The first pitfall is failing to establish copendency between an application and its immediate predecessor as required by 35 USC 120.

As mentioned above, if the lack of copendency results from unintentional abandonment of the parent before the continuing application is filed, the lack of copendency often can be remedied by briefly reviving the abandoned parent at any time while the continuing application is pending.

If, however, the break in copendency results from the parent application being issued as a patent before the continuing application can be filed, with no other continuing application pending to which priority might be claimed, this problem may be incurable. You can’t un-issue an issued patent, nor is failure to file a continuing patent application an error in the parent patent, entitling you to file a reissue application of the parent. You can’t recapture in a reissue application a claim you canceled from the parent application to avoid prior art. About all you can do in this

75 37 CFR 1.8.


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situation is claim subject matter in a reissue application that was not previously presented, but is fully supported by the original application.

2. L ack of C ommon I nventor

Another pitfall to avoid is failing to have at least one inventor in common between each continuing application and all its antecedent applications.76 Every application in a chain of priority claims under 35 USC 120, including any provisional patent application to which priority is claimed, must recite at least one common inventor, as filed. You can meet this requirement relatively easily, if you are aware of it, by filing each application in a series with at least one claim to which a common inventor contributed. Even if that claim is later canceled during prosecution, and the patent issues without at least one inventor in common, you still have an inventor in common as of the filing date for purposes of claiming priority under 35 U.S.C. 120.77

3. New M atter

Still another pitfall for the unwary is inserting new matter in a continuation or a divisional application, which amounts to mis-labeling the relation of a de facto continuation-in-part patent application to its parent.

As pointed out above, you can and often should change non-substantive details in a continuation or divisional patent application, such as the docket number, the title, the summary, and the claims to take out references to inventions not being claimed in the particular application. But you cannot add new matter, unless the continuing application is indicated to be a continuation-in-part application.

4. L ate or Nonexistent or I ncor r ectly W or ded Pr ior ity C laim(s)

Yet another pitfall to avoid is filing a late priority claim, an incorrectly worded priority claim, or no priority claim at all. Before filing a patent application, you should carefully consider what other applications are pending, and whether priority can and should be claimed to each of them. Some countervailing considerations are that, on the one hand, you can avoid prior art if you leapfrog behind it with a proper claim of priority to a prior patent application. On the other hand, if you claim back too far, you are unduly shortening the potential term of any patent that may issue.

One way to avoid being forced to decide whether to have your cake or eat it is to file one application claiming an early priority and only inventions supported by the earliest antecedent application, and a separate application claiming inventions only entitled to a later priority date, or no priority date at all. The inventions in the separate application may need to be patentably distinct from anything disclosed in the earlier chain of applications, but if you meet this test the resulting patent will out-last the predecessors to which it did not claim priority.

76 See 35 USC 120; 37 CFR 1.78(a)(1); MPEP 201.03. 77 MPEP 201.03 II e.


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Remember the absolute requirement that any priority claim to be made under 35 USC 120 in a patent application must be made while that application remains pending. Under 35 USC 120 as amended in 1999, if you miss this deadline you cannot fix the problem, as you once could, by filing a request for a certificate of correction making the missing priority claim.

Also remember the rule that a priority claim must be made within four months after the application is filed or within 16 months after its earliest priority date, whichever is later.78

5. F ailur e to I dentify R elationship to Par ent

If you unintentionally miss this deadline, it is correctable by paying a substantial fee and filing a petition to make a later priority claim.

As was pointed out above, 35 U.S.C. 120 requires each application claiming priority to state its relation to its predecessor – continuation, divisional, or continuation in part.

6. F ailur e to C laim Pr ior ity of A ll Needed Par ents, G r andpar ents, G r eat-G r andpar ents, E tc.

While a particular claim must be supported fully by each individual application to which it claims priority (for the priority claim to be useful), different claims in a continuing application may be supported by claiming priority to separate antecedent applications. Claims 1-3 might be fully supported only by priority application A, claims 4-6 might be fully supported only by priority application B, and so forth. You need to claim priority both to Application A and to Application B, even though Applications A and B might not be related to each other. Put another way, you can have converging branches in your chain of priority.

Similarly, you need to be sure that any particular chain of priority claims is unbroken. If you just claim priority to the parent and the great-grandparent applications, omitting the grandparent, and if the parent and great-grandparent applications never were copending with each other, only the claim to the parent application is legally sufficient.

7. M issing Disclosur e

Another pitfall you can suffer in a series of two or more continuing applications is a lack of continuity of disclosure from one application to the next. This can be a problem in particular with continuation-in-part applications. Be very judicious in what you cut out of the continuation-in-part application, in the course of editing the application to make new disclosure fit.

You can correct lapses of disclosure if you have incorporated by reference each prior application at the time the continuing application is filed. You cannot, however, add a statement of incorporation by reference after application filing date: if you do, it’s new matter.79

78 37 CFR 1.78(a)(2)(ii).

79 201.11 MPEP.


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8. Double Patenting I ssues can A r ise

One problem that often occurs when you file two or more related applications is double patenting. A detailed discussion of double patenting is beyond the scope of this paper. Providing the respective applications are commonly owned, however, it is often not a problem to file a terminal disclaimer to overcome a double patenting rejection.

9. C ontinuing Design Application C laiming Pr ior ity F r om Utility Par ent

One fairly unusual type of continuing application is a design patent application that claims priority from a utility patent application. If the utility application has adequate disclosure of the visible parts of an article, it may provide adequate support for a continuing design application under 35 USC 112.80

E . Divisional

Now consider the particulars of a divisional patent application.

A divisional patent application is filed to prosecute claims to a separately patentable invention that has been removed from the parent application as the result of a restriction requirement by the Examiner.81

The way for a divisional patent application is paved when a predecessor application is filed with claims that the Examiner determines are directed to two or more independent and distinct inventions that can be separately patentable. Restriction is then required under 35 USC 121 and related rules. This is commonly done in a special Office action known as a restriction requirement. The applicant can attempt to overcome the restriction requirement, as by arguing that the claims are not independent and distinct or by showing that the respective claims can be examined together without a serious burden. But usually the restriction requirement is made final, the claims to restricted-out inventions are withdrawn and usually ultimately canceled, and the remaining invention is prosecuted in the application in which restriction was required.

One consideration, if the initial application is restricted more than one way, is whether to prosecute each desired divisional patent application at once, prosecute one at a time, or some combination. Cash flow considerations, both for filing fees and for attorney time, may dictate serial prosecution of the claims, one group at a time, filing each one while the previous one is pending. If you are interested in maximizing the term of each resulting patent and can afford the cash flow requirement, you may want to consider parallel prosecution in which two or more of the divisional applications are prosecuted at the same time.

In the interest of economy, however, you should avoid provoking serial restriction requirements in a chain of divisional applications.

80 1504.20 MPEP. 81 See 35 U.S.C. 121; 201.06 MPEP.


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For example, assume you file Application A claiming 10 distinct inventions (1 through 10), each embodied in 10 different claims (i.e. 100 total claims and 10 independent claims). You will owe a lot of extra claim fees for 80 extra claims and 7 independent claims in excess of the 20 total claims and three independent claims covered by the basic filing, search, and examination fees. Before examination, assume the Examiner gives you a 10-way restriction requirement, and you elect the ten claims to Invention 1 in Application A and withdraw and later cancel the other ninety claims.

Now assume you file Application B claiming the nine distinct inventions (2 through 10) restricted out of Application A, each embodied in 10 different claims (i.e. 90 total claims and 9 independent claims). You will still owe a lot of extra claim fees for 70 total claims and 6 independent claims in excess of the 20 total claims and three independent claims covered by the basic filing, search, and examination fees for Application B. Before examination, the Examiner gives you get a 9-way restriction requirement, you elect the ten claims to Invention 2 in Application B and cancel the other eighty claims.

Now assume you continue adhering to your “10 little Indians” strategy by successively filing Applications C through J, each claiming one fewer invention, allowing each to be restricted to only one of the claimed inventions, filing the next divisional application claiming all the remaining inventions, and paying extra claim fees for most of the submitted claims. All but the last two applications (I and J) will require extra claim fees to be paid for claims that are ultimately restricted out of the application.

Thus, for 10 claims submitted identically in Applications A through H, extra claim fees will have been paid eight times and wasted seven times. That’s paying for 70 extra claims. For another 10 claims submitted identically in Applications A through G, the extra claim fees will have been wasted six times, by paying for 60 extra claims. In all, you will end up wasting 70 + 60 + 50 + 40 + 30 + 20 + 10 = 280 extra claim fees, as well as fees for many extra independent claims.

You don’t need to do this. You can avoid most of the waste, after filing 100 claims, being restricted, and prosecuting 10 in Application A, by filing just the second set of 10 claims in Application B, just the third set of 10 claims in Application C, and so forth. You can file divisional applications B-J either all at once or serially (providing in either case that you maintain copendency).

Additionally, you can avoid paying for 100 claims in the first application by filing all the claims, then filing a preliminary amendment after the filing date reducing the claims to the ten independent claims plus the ten dependent claims corresponding to one independent claim you desire to prosecute in the first application. If the filing fee is paid with or after the preliminary amendment, the extra claim fees resulting from filing 100 claims in the first application can be eliminated.

1. T iming Of Divisional – A fter , R esponsive to R estr iction R equir ement

One question you may have is, why file a first patent application claiming multiple related inventions, only to have the USPTO restrict the application into multiple independent and


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distinct groups of claims? Why not simply file separate applications in the first place? The reason is that you can avoid double patenting rejections among the parent and divisional applications by allowing the USPTO to decide how the claims are grouped into separately patentable inventions.82

If, however, you end up filing continuations or continuations in part of the divisional patent applications, you again may need to deal with double patenting issues. You may be able to avoid affecting the whole portfolio, however.

If you do so, and you then prosecute each group of claims as identified by the Examiner in only one application, you can avoid double patenting issues.

2. F ile as a Divisional, Not a C I P

The applicant can prosecute the restricted out claims by filing one or more divisional patent applications. Keep in mind, however, that the applications must be divisional patent applications, not continuation-in-part applications (even if only restricted out claims are asserted) to achieve “safe harbor” status under 35 U.S.C. 121.83

F . C ontinuation

The next type of continuing application to be addressed is the continuation application. Once the workhorse for reopening prosecution after receiving a final rejection, continuations now have a reduced role.

A common use for continuations today is to subdivide claims to a single invention into more than one application for separate prosecution. One application can be allowed to issue while a continuation is further prosecuted, or both can be prosecuted using different techniques at the same time.

One situation commonly giving rise to a continuation is this. Say that claims 1-5 have been finally rejected, claims 6-10 have been allowed, and the Examiner has refused to enter amendments or evidence needed to advance prosecution of claims 1-5. The client wants a patent to issue as soon as possible, as well as obtaining the best possible coverage ultimately.

Claims 1-5 could be prosecuted after the final rejection by filing an RCE; an RCE, if effective, will re-open prosecution of the entire application and no patent will issue until prosecution is completed again. But the client wants some patent to issue as soon as possible. That leaves the other tool for re-opening prosecution after it is closed: a continuation application.

You can get your client a patent on claims 6-10 promptly by canceling claims 1-5, after which the Examiner will mail a Notice of Allowance of claims 6-10. Once the issue fee is paid, claims 6-10 will issue in a patent. Meanwhile, a continuation application can be filed containing claims 1-5. This continuation should contain the same disclosure as its parent, with formal matters such as the priority claim, docket number, etc., updated.

82 35 USC 121. 83 Pfizer, Inc. v. Teva Pharm., Inc., 518 F.3d 1353 (Fed. Cir. 2008).


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Since the continuation application is just being filed and prosecution is not closed, claims 1-5 can be amended and any desired additional claims can be added. Affidavit evidence can be submitted. An interview may be easier to obtain. You can thus overcome the restrictions you faced when the parent application was under final rejection and prosecution was closed. The client has a first patent that can be used in marketing, to sue infringers, and generally make your ultimate boss – the client – happy that progress has been made, even though additional claims remain to be prosecuted.

A related use for a continuation, when some claims are allowed and others are rejected as of the final action, is to take the allowed claims out of the Examiner’s control, by issuing them in a patent, while continuing the prosecution of the remaining claims. Why does this make sense in some cases? As indicated above, you can file an RCE to continue prosecution when some claims are allowed and others are rejected. But if you carry along allowed claims 6-10 with the rejected claims 1-5, the Examiner remains free to withdraw the holding of allowance of claims 6-10. This can particularly be a problem if a new examiner takes over prosecution for some reason and has a different view of the merits, but the original examiner is also free to simply change his or her mind on the merits, until the patent issues. Of course, another reason for rejecting previously allowed claims might be that new prior art has turned up.

But regardless of the reason, if you haven’t issued claims 6-10 in a first patent before continuing prosecution, and they are then rejected, you no longer have the opportunity to issue a first patent promptly. Maybe you can overcome the new rejection, but almost certainly you can no longer do it quickly. So sometimes it may be the best course to issue the allowed claims quickly and pursue additional claims in a continuation. Even if the strength of claims 6-10, as issued in the first patent, is compromised by new prior art found later during prosecution of other claims, the patent is presumed valid and a challenger needs to find clear and convincing evidence to show it is invalid. That is why a bird in the hand, in the form of claims of an issued patent, is worth two in the bush, in the form of claims that are allowed but not issued.

If you have a continuation pending and the claims of the first patent are compromised, you can always put in additional claims in the continuation that address the problem with the original patent. Or you can address the problem with the claims of the first patent by reexamination or reissue, or by developing additional evidence of patentability you can use in the event of litigation. But at least you have a patent in the first place.

While the need to issue some claims in a patent while continuing prosecution of others is probably the main use of continuation applications, they have other uses as well.

One way to use continuation practice is to enable you to use different prosecution styles for similar claims in separate patent applications at the same time. Say you have an application containing claims 1-10, all standing rejected on prior art. Say further you can avoid the prior art either by swearing behind it or by amending the claims to overcome it. Also assume the client wants the strongest possible patent protection as soon as possible.

If you just swear behind the prior art and the patent issues, you will not have the amended claims as a fallback position in case a court decides in the future that the Examiner did not have proper grounds to accept the declaration swearing behind the prior art.


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If, alternatively, you swear behind the prior art and also enter the amended claims as additional claims, and the Examiner agrees that you have successfully sworn behind the prior art, the Examiner probably won’t consider the separate question whether your amended claims also avoid the prior art. You thus won’t have anything in your prosecution history showing that the Examiner considered the prior art and found your amended claims patentable. This may leave the amended claims open to reexamination by a competitor, or challenge in litigation, with no statement from the Examiner requiring deference (in litigation) or preventing a substantial new question of patentability from being raised (in reexamination).

You can do better, in many cases, by splitting off a continuation application with the amended claims, so the original and amended claims are in different applications. You can swear behind the prior art in one application, seeking broad claims that are not subject to prosecution history estoppel, and overcome the prior art in the other application using the amended claims, which are subject to an estoppel but are declared by the Examiner to overcome the prior art. You thus have avoided prosecution history estoppel in your broad claims, giving you a much better chance to establish infringement by equivalents, while also obtaining narrower claims supported by a good prosecution record. Ask any litigator: this scenario is better because it gives the litigator more potential for finding at least some claim that is both valid and infringed.

Essentially the same considerations apply, when facing rejected claims, if you quickly and substantially amend the claims to obtain allowance of an original application – essentially “caving in” to the Examiner’s demands – then refile your broad claims in a continuation and take a harder line on their patentability in arguments to the Examiner and, if needed, the Board of Patent Appeals and Interferences, or even the Federal Circuit. I call this “have your cake and eat it too.”

Still another use of continuation practice is simply to obtain a large portfolio of diverse claims. An Examiner often will resist allowing a large number of claims in an application, simply due to the Examiner’s workload. Particularly if you have a lot of independent claims that can’t be divided up by restriction, the Examiner may not have time to get through them all. The Examiner will often do a better job on the first few claims than on the rest, and hold fast to flimsy rejections of the remaining claims. That way, the Examiner doesn’t blow his or her time budget on an application with many claims, and also doesn’t issue the poorly examined claims. The Examiner effectively needs to spread indivisible claims among several different applications, since the basic unit of work determining the Examiner’s bonus is the number of applications he or she examines and disposes of, not the number of claims.

If your prosecution of a first application goes this way, and prosecution is now closed, you can get the remaining claims with flimsy rejections examined more efficiently by filing one or more continuation applications to prosecute the remaining claims. If you consider the cost of extra claim fees versus the full filing, search, and examination fees in an application, you will note that there is not even an initial financial penalty to breaking up a large application into applications containing no more than three independent claims and 20 total claims. (At the back end there is a penalty, in the form of issue and maintenance fees that are the same per application for many small patents as for one big one, but only for patents you ultimately obtain.)


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Another use for continuation applications is to allow you to continue to modify your claims to address competitive actions, without filing a reissue application.

Building a patent portfolio is a dynamic process. An inventor files a patent application, which usually is published after 18 months. The published application raises immediate issues for competitors (if they are practicing what is claimed or have similar patents pending, for example) and has long-term implications as well. (What claims will the patentee get in the patent? What claims may be obtained in future patents?) The competitors often will watch the publication of patent applications and the issue of patents, as well as following the inventor’s prosecution in the Public PAIR system, then design around the claims in published patent applications, and particularly those that are issued in patents. Assuming the inventor and his or her counsel are not clairvoyant, it often is difficult to know what competitors will do to avoid the claims of a patent.

An important quid pro quo for publishing a patent application before it issues, and giving competitors a head start on designing around the claims while appropriating the essence of the invention, is that the inventor is entitled to file continuing applications with new claims that cover the competitor’s attempt to design around the patent. This opportunity for the inventor is of course limited because the new claims need to be fully supported by a prior application that pre-dates the development of the design-around. The inventor does need to be a good predictor of where the market might move, and build enough disclosure into an early patent application to support claims that move the same way. The inventor can never properly claim what he or she did not invent. But at least the inventor has a chance to protect an invention he or she in fact disclosed originally but did not claim broadly enough the first time.

Moreover, after the inventor claims and the competitor designs around, that is not the end of the dance in many cases. The inventor might present a claim that captures the design-around, the competitor might design around again, and so forth.

This is a common use of continuation practice when building a portfolio. It only works effectively if an inventor is able to keep a continuation pending for a substantial period after the original patent issues, often for much or all of the 20-year life of the portfolio.

Finally, a continuation can be used in the same manner as an RCE – to continue prosecution of a first application after prosecution is closed, without issuing the first application as a patent.

Routinely, an RCE is a better choice for this purpose, as it is established and acted on more quickly than a continuation. A continuation needs to go through the same preliminary processing as a new application, though the Examiner will usually pick it up more quickly than an original application because normally it requires much less work than the parent application.

But if you are just keeping an application pending in anticipation of needing a vehicle for addressing competitor’s design modifications that avoid the current portfolio, and don’t have any significant new claims to prosecute yet, you may not be in a rush to get through the USPTO. If you file too many RCEs or continuing applications without advancing prosecution much, you might be found guilty of laches, and lose the right to continue prosecuting the application. In this situation, you might want to proceed by filing continuations instead of RCEs, so the application is recycled fewer times in a given amount of time.


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G . C ontinuation I n Par t

Now consider the final type of continuing application – a continuation-in-part (“CIP”) patent application. Continuation-in-part practice requires much more skill than divisional or continuation practice, as will become evident. Unlike RCEs, divisionals, and continuations, a CIP patent application is not filed to merely continue prosecution of claims based on the same disclosure found in the parent application. The CIP contains subject matter not entitled to the priority of the parent application. This can lead to several traps for the unwary.

1. Pur pose – C ombine Old and New M atter in a Single A pplication

A CIP combines old subject matter carried over from the parent patent application and new subject matter not found in the parent patent application. Its various claims thus can have different effective filing dates. Claims fully supported by the parent disclosure can share its priority date, if properly claimed. Claims not fully supported by the parent disclosure have no priority date before their filing date.

2. A pplicable Situations

There are several situations that are best addressed by filing a CIP instead of a continuation application, a divisional application, or an RCE.

One such scenario comes from the fact that many inventors continue to improve upon and add to their inventions after the first patent application is filed. If the new developments are so different from the original that an entirely new patent application is justified, that can be filed. But often the new developments are so closely related to the invention described in the preexisting application that it would be desirable to have the improvements and the original developments in the same patent application. For example, it may be desirable not to face the original disclosure as prior art, particularly if the original and new inventions have overlapping but not identical inventors. In some situations this can be managed by filing a continuation-in-part application claiming both the basic invention and improvements, before or within one year after the parent application or any earlier application is published or issued as a patent, or in public use or on sale. Often, the parent application is abandoned in favor of the CIP, thus avoiding double patenting issues and extra maintenance fees that would be payable if both the parent and the CIP issued as patents.

For example, say your client discovers a new natural material that cures cancer. The client knows how to find it in nature, but doesn’t know its structure or how to make it. You can’t disclose what you do not know, so you disclose in the first patent application how to find the natural material and extract it from a natural plant that grows only in the Bolivian Andes above the timber line, and how to use it to cure cancer. You want to claim as broadly as you can, so you claim similar extracts of the entire taxonomical family of related plants, none of which you have tested for anti-cancer activity. You claim a broad range of dosages, though you have only tested it on a few laboratory animals of one species at a particular dose. You claim utility in humans, though you haven’t tested it in humans. You claim the product using a product-by-


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process claim, because that is all you have to work with. In short, you disclose everything you know, which is not a lot, and guess about the rest.

11 months after you file this first application, a business manager decides that the original disclosure is not of sufficient value to patent outside the United States. Bolivia has locked down all its borders completely, so no one can have access to its indigenous plants without paying an exorbitant fee to support a Swiss chalet and matching Swiss bank account for the Bolivian Minister of Self Fulfillment. In short, you have no supply of the plant needed to practice the invention. Bolivia does not, however, know about your discovery relating to a Bolivian plant. The business manager is questioning whether it makes sense to allow the first application to be published, thus tipping off the Bolivian Minister of Diversity and competitors about how to make and use the cancer cure, to which the Minister now has access and you do not.

Thirteen months after you file the first United States patent application, a different set of inventors including one common inventor at the same company discovers that the active agent of the natural material is a protein, and you learn its amino acid sequence and how to make it without access to the natural plant. You find out that the dosages that worked in laboratory animals don’t work on humans—you need 10,000 times the maximum dose you disclosed in the original application, and the larger dose turns out not to work in humans on the type of cancer you originally treated successfully in animals. You find, however, that it works on other types of cancer very well, in humans. Moreover, you find that, of the entire family of related plants, consisting of 50 genuses and 2000 species, only one genus of plants shows activity, and about half of its 50 species show activity. Also, with the intervening improvements, the business manager now decides it is worth publishing the application and disclosing the invention worldwide.

You would be wise, in this situation, to file a CIP disclosing and claiming all this new information, before the publication date of the parent application (to protect rights in absolute novelty countries). The CIP won’t take the benefit of the parent application for any but the original disclosure, but that will at least prevent the Bolivian Minister and his minions at other pharmaceutical companies from competing by producing the natural material and selling it in the United States.

Another use for CIPs is to correct outright mistakes. 23 months after the original disclosure was filed in the above example, say that the inventors discover that the amino acid sequence recited in the patent application mis-named two amino acids, and thus recites a sequence having only 1% of the utility of the right sequence for curing cancer. But all the other disclosures were correct. You might want to file a CIP as soon as possible, correcting this error.

You want to file a CIP claiming priority, not a new application, because claiming priority allows you to argue that you inherently disclosed the correct sequence by disclosing how to make and use the plant-derived material in the grandparent application, thus adequately supporting your product claim in the latest CIP. If you don’t claim that priority, you may face the grandparent application as prior art making an inherent disclosure of the correct sequence, potentially invalidating your claim to the correct sequence.


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It is not clear the patent owner will succeed in claiming inherent disclosure beneficially, as the predecessor applications may be found to lack a written description of the sequence (so priority cannot be claimed), but enable a person of ordinary skill in the art to make and use the correct sequence (so the predecessor applications can function as prior art). But if there is any doubt about the outcome, you need to salvage what you can from the situation. At the very least, the original patent application would have been published less than a year before, so at least the correct sequence does not face a statutory bar in the United States, though it will have a later priority date.

3. T iming

The above example illustrates that, with a CIP, you have an extra timing issue. Not only does the CIP need to be filed while the parent application is pending, under 35 USC 120, but statutory bars may be running, or run out, on the new material in some cases, based on earlier filing or particularly publication of the predecessor applications. You need to file the CIP in time to beat the date on which any such bars become effective, when possible.

4. W hat to F ile

The mechanics of filing a CIP are different than for filing a divisional or continuation application, and bear more similarity to filing an original application.

a. T r ansmittal L etter , A pplication Data Sheet

You file the same type of transmittal letter or application data sheet for a CIP as for an original application, but simply claim status and priority as a continuation-in-part application.

b. Need New Signed Declar ation, A ssignment, Power of A ttor ney

One requirement that makes CIP practice more like original patent application filing, and less like a continuing application, is that all the papers to be signed by the client or the inventor normally need to be prepared and executed again when you file a continuation-in-part application. You need a new declaration signed by all the inventors properly named in the CIP. You need a new assignment executed by all the inventors. You may even need to obtain a new Power of Attorney from the inventors or client. You can’t use photocopies of the previous papers.

c. Specification

The specification for a CIP generally involves more preparation time than for a continuation. Normally you should put in all the disclosure of the parent application, plus whatever new disclosure you are adding. Normally, carry over all of the disclosure of the parent application to avoid lapses of disclosure, as otherwise you might later want to claim something that you took out. As always, you can and should amend the docket number and priority claim in the document itself.


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Also be aware that when you file a continuation-in-part application, you must update the best mode disclosure. This is not necessary for a continuation or divisional application.

d. C laims

The claims can be the same for the CIP as for the parent application, or radically different, depending on the situation.

A first situation is when a predecessor application has been published or patented, or the subject matter disclosed has been in public use or on sale, for more than one year. This situation raises the predecessor application as a statutory bar for all that it enables. In this situation, you want just two types of claims: (1) claims that are fully supported by each one of the prior application(s) that would otherwise raise a statutory bar, so they antedate the bar by claiming priority; and (2) claims that are patentable over the disclosure of the prior application(s), so they are patentable notwithstanding the status of the parent as prior art. Of course, the latter claims could, and maybe should, be pursued instead in an original application, if these claims are clearly not supported in full by each otherwise-barring application. That will make it much clearer to all involved that foreign protection is available.

On the other hand, if the predecessor applications have not been disclosed, published, or patented for more than a year, you may be free to pursue claims that are obvious in view of, but not fully supported by, any of the earlier disclosures, at least in the United States. But 35 USC 102(a), (e), (f), or (g) problems can arise if inventorship is entirely different and the applications are not commonly owned or subject to CREATE Act (35 U.S.C. § 103(c)) treatment.

5. Pitfalls of C I P Pr actice

There are a number of pitfalls that the unwary practitioner can fall into when filing CIPs.84

First, the claim to priority of one application under 35 USC 120 doesn’t protect any claim that must rely to any degree on matter introduced in a different priority application for full support.

85

Second, as also shown above, if the priority claim fails, respecting a claim in the CIP, it is subject to intervening 35 USC 102 prior art.

For example, in the Bolivian plant example above, the priority claims do not improve the effective filing date of a claim reciting the correct sequence of amino acids in the protein that is effective to cure cancer. For another example, if you need to go to two or more disclosures to find full support for the claim, it doesn’t have adequate support and gets no benefit from the priority claim to either prior application.

86

84 See generally, Catherine M. Polizzi, Kicking the CIP Habit: The Perils of Continuation-In-Part Practice, INTELLECTUAL

PROPERTY TODAY, February 2006, pp. 10-12.

85 201.11 MPEP; In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); Transco Products, Inc. v. Performance Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994); In re Van Lagenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA 1972); Chromalloy American Corp. v. Alloy Surfaces Co., Inc., 339 F. Supp. 859, 874, 173 USPQ 295, 306 (D. Del. 1972).

86 See, Mendenhall v. Cedarapids Inc., 5 F.3d 1557, 28 USPQ2d 1081 (Fed. Cir. 1993); In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971); In re Hafner, 410 F.2d 1403, 161 USPQ 783 (CCPA 1969); In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958); In re Steenbock, 83 F.2d 912, 30 USPQ 45 (CCPA 1936); and Ex parte Hageman, 179 USPQ 747 (Bd. App. 1971).


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Third, particularly in an organization with many inventors, new claims related to earlier patent applications may not have any common inventors, compared to the earlier applications. This problem can often be addressed by filing in each CIP application at least one claim establishing continuity of inventorship with all prior applications in the series. After the filing date, if the claim establishing common inventorship is canceled, continuity of inventorship is not lost.87

a. Self-C ollision B etween C I P and an Antecedent A pplication by Same I nventor (I n r e R uscetta)

However, if the claims as originally filed do not contain the contribution of a common inventor, continuity of inventorship is lost and cannot be regained.

Before filing continuation-in-part patent applications, you should master the sad tale (from the point of view of the applicant and practitioner) of In re Ruscetta.88

Ruscetta filed four relevant patent applications, as listed and summarized in the following table:

This classic case shows how much trouble CIP applications can be, if filed after a related predecessor application becomes a 102(b) bar.

Filing Date

Application Subject Matter

August 29, 1950

1 Ruscetta et al. original US application Etch Ta electrode to increase capacitance; NO disclosure of Zr, Ti, Nb, or Ta/Nb

July 11, 1951

2 Ruscetta et al. first US CIP application; good § 120 claim to 1

Same as 1

May 13, 1953

3 Ruscetta et al. British specification, identical to 1 and 2, filed later, published

Same as 1

May 9, 1955

4 Ruscetta et al. 2d US CIP application; § 120 claim to 1 and 2

Etch Ta, Zr, Ti, Nb, or Ta/Nb electrode to increase capacitance (genus and species).

Ruscetta, 255 F.2d at 688.

As the above table shows, Ruscetta filed the first two applications in 1950 and 1951, while the third application was published in the United Kingdom in 1953.89

87 MPEP 201.03 II e.

Each of these first three applications was essentially identical, and disclosed that one can etch a tantalum film electrode for use in an electrolytic capacitor to increase the capacitance of the capacitor without increasing

88 255 F.2d 687, 118 U.S.P.Q. 101 (C.C.P.A. 1958). 89 Ruscetta, 255 F.2d at 688.


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the gross area of the electrode or changing the amount or thickness of the tantalum used.90 These applications provided no disclosure of zirconium, titanium, niobium, or tantalum/niobium alloy film electrodes.91

Claims limited to a tantalum electrode were filed in the fourth application, which claimed priority to the first two applications, and these claims were allowed.

92

The fourth application, however, also disclosed and claimed for the first time the same process practiced on a generic group of claims including zirconium, titanium, niobium, or tantalum/niobium alloy film electrodes, as well as tantalum ones. These generic claims were properly rejected as barred by the British specification. The British specification was effective as an anticipating printed publication under 35 U.S.C. § 102(b).

These claims were fully supported by the first two applications, which both were filed before the British application was published. The fourth application was successful to this degree.

93

As reiterated in the Steenbock case, it is axiomatic that the disclosure of a species in a reference is sufficient to prevent a later applicant from obtaining generic claims, unless the reference can be overcome, and so the British specification disclosing the species tantalum, published over a year before appellants filed their generic disclosure, is clearly a statutory bar to the granting of the generic claims.

So the rule that an earlier species claim anticipates a later genus including the species was one basis for the Ruscetta decision.94

But there’s more. The British specification also barred the grant of claims to the zirconium, titanium, niobium, and tantalum/niobium alloy species first disclosed in the fourth application. The British specification did not anticipate these species claims, as it did not disclose any of them. But these species were held to be obvious in view of a combination of the Ruscetta British reference combined with prior art by Taylor showing zirconium, titanium, and niobium as "film-forming corrosion-resistant metal" capacitor electrodes similar to tantalum.

95

The final nail in Ruscetta’s coffin was the following statement: “Of course, it is of no moment whether the bar of a patent, printed publication, public use or sale results from the acts of the applicant or of others, so the circumstance that the British specification was applicants' own cannot be taken into account.”

The claimed priority of the first two Ruscetta applications in the fourth one did not change this result. The first two Ruscetta applications were inadequate to support the titanium, niobium, or tantalum/niobium alloy claims in the fourth Ruscetta application, so the 35 USC 120 claim of priority was useless. The fourth application was entitled to no prior date than its own filing date.

96

90 Ruscetta, 255 F.2d at 688.

91 Ruscetta, 255 F.2d at 688. 92 Ruscetta, 255 F.2d at 689. 93 Ruscetta, 255 F.2d at 689-690. 94 Ruscetta, 255 F.2d at 689-690. 95 Ruscetta, 255 F.2d at 691-692. 96 Ruscetta, 255 F.2d at 694.


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How can it be that one’s own disclosure that is inadequate to afford priority to a later application can be adequate as prior art against the later disclosure? The answer is simple. The Section 112 support required to claim priority under 35 USC 120 is more stringent than the enablement and obviousness requirements of prior art. The prior art only needs to enable practice of the invention and make it obvious. A priority application must also provide a written description of the invention and reveal the best mode to support claims in the CIP as required under 35 USC 112. Moreover, prior art can be combined in obviousness rejections, while two or more priority applications cannot be combined to fully support a claim under 35 USC 112.

Nowadays, of course, the Ruscetta problem arises more quickly and is more pervasive, as most US and foreign patent applications are published 18 months after the earliest worldwide priority date. Ruscetta's British specification was published nearly three years after its earliest priority date.

b. F ailur e to R etain at L east One C laim F ully Suppor ted B y E ach Pr ior ity A pplication

As explained above, a long chain of continuing applications is more like a web than a chain because each link must specifically mention and claim priority of each prior application.97 If a CIP application is involved anywhere along the line, new subject matter is disclosed and usually claimed. One can easily but not safely overlook the requirement that at least one claim in the CIP must be fully supported by the earliest application to which priority is claimed, and by every other application linking the earliest application and the current CIP. The applicant cannot rely on a combination of priority applications to support a single claim.98

c. T er m L oss for L ater A pplications

Another possible peril of CIP practice is of particular importance when a proper claim of priority cannot be made, but is asserted anyway. A claim of priority may provide a benefit, if the priority claim is proper respecting a certain patent claim. But the priority claim will confer a burden on every claim in the claiming patent, whether the claim of priority is effective for that patent claim or not.

For example, say you file a CIP 15 years after the filing date of the earliest patent application to which the CIP claims priority. Claims 1-9 of the CIP are not supported by the earliest priority application, while claim 10 is fully supported by the earliest priority application. But all the claims 1-10 of any patent issuing from the CIP will expire 20 years after the earliest claimed priority date – just five years after the CIP is filed.

In this situation, you would be wise to segregate claims having different effective priority dates into separate applications, each claiming only the earliest priority to which it is entitled, rather than prosecuting the continuation-in-part application containing claims having different priority dates.

97 35 USC 120. 98 201.11 MPEP; Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 42 USPQ2d 1674, 1677 (Fed. Cir.

1997).


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d. M ost Pr oblems Not C aught by USPT O

One problem with priority mistakes or disclosure lapses in a continuation-in-part application is that they may not be detected by anyone for many years, and when discovered they may be fatal.

The Examiner in the USPTO seldom notices problems with CIPs, because the Examiner doesn’t routinely examine the propriety of a claim of priority in a CIP.

Unless the filing date of the earlier non-provisional application is actually needed, for example, in the case of an interference or to overcome a reference, there is no need for the Office to make a determination as to whether the requirement of 35 U.S.C. 120, that the earlier non-provisional application discloses the invention of the second application in the manner provided by the first paragraph of 35 U.S.C. 112, is met and whether a substantial portion of all of the earlier non-provisional application is repeated in the second application in a continuation-in-part situation.99

These problems tend to be noticed too late, when the patent owner wants to enforce a patent from a portfolio of related patent applications joined by priority claims. When that happens, it is the patent owner’s burden to prove entitlement to an early priority date, even though the challenger otherwise has the burden to prove invalidity by clear and convincing evidence.

100

Since the USPTO does not confer a safety net, you need to put up your own. CIP practice is much more complicated than other continuing prosecution, so be careful. Know what you are accomplishing, and at what cost.

6. C I P Pr actice T ips

Accordingly, here are some practice tips for CIPs. The basic rule is that the longer applications have been on file, the less you can do in a CIP. The same problems arise from late filing of a CIP as from late filing of the original patent application.

a. Use New A pplication Deadlines for C I Ps

The first practical deadline for getting new subject matter into a United States patent application (CIP or original), to avoid U.S. and foreign bars created by earlier filed applications, public uses, etc., is to get them on file: (1) within one year after the earliest Paris Convention priority date (the date on which the first patent application worldwide is filed, generally speaking), and (2) before any immediately barring activity occurs, such as public use or publication anywhere in the world. So the two catch phrases are: file on improvements before disclosure, and file as much as you can during the Paris Convention one-year grace period. It is a good idea to check back with the inventor(s) or client(s) before the end of the Paris Convention year, to see if there is anything new to file upon within that year. 99 201.08 MPEP. See also, PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) (quoting the July 1998

version of the language quoted here). 100 PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008).


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The next deadline to pay attention to is the first publication date. Publication occurs in most important countries 18 months after the earliest priority date. As that 18-month date approaches, check again to see if there are any improvements, etc., you want to get on file before the application is published anywhere in the world. In absolute bar countries, this may be your last chance to properly supplement your earlier application.

For United States filing, where there is a grace period of one year after a potentially barring event, another deadline to watch is 30 months after the earliest priority date (i.e. one year after the 18-month publication date). Get your CIP on file before that deadline, if you can. Of course, to cover public use and on sale bars, you need to keep track of the anniversary of the first such bar, and also get CIPs on file before that anniversary arrives, if possible.

b. C laims Not F ully Suppor ted by Pr e-B ar Pr ior ity A pplication M ay Need to be Non-Obvious in V iew of B ar r ing Pr ior ity A pplications

If your CIP is being filed after a 102(b) barring event, you can only secure two types of claims. The claims either need to be fully supported by a patent application filed before the bar is effective or non-obvious in view of the potentially barring subject matter.

If you are filing claims that are non-obvious in view of the barring subject matter, don’t claim priority to applications that do not fully support the claim. This does not get priority and shortens the life of any resulting patents.

Also keep in mind that other prior art under 35 USC 102(a), (e), (f), and (g) may also need to be avoided, even if you have no 102(b) prior art.

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