Understanding the Concept of Continuation in Part

By Babak Akhlaghi on August 2, 2024. Navigating the world of patents can be complex, but understanding the concept of a continuation in part (CIP) can be particularly beneficial. This article will break down what a continuation in part is, why it's used, and how it can impact your patent strategy.

What is a Continuation in Part?

A continuation in part (CIP) application is a type of continuing patent application. It allows an inventor to add new material to an existing patent application while retaining the original filing date for the shared content.

This means that the new application "continues" from the original application but includes "in part" new information or improvements that were not disclosed in the original filing. In this regard, a CIP is different from a continuation application, which doesn't include any new information. A CIP can be particularly useful when you've made additional discoveries or innovations after submitting your initial patent application.

Why Use a Continuation in Part?

Enhancing Your Original Invention

One of the main reasons to use a CIP patent is to incorporate new developments or improvements that have been made since the original filing. This can help ensure that your patent covers all aspects of your invention, including any enhancements that could increase its value or functionality.

For example, if you originally filed a patent for a new type of smartphone and later developed an innovative battery technology for it, you could file a CIP to include the new battery technology in your patent application.

Extending the Scope of Protection

A CIP can also be used to extend the scope of protection for your invention. By including new material, you can potentially cover a broader range of embodiments or variations of your invention. This can make it more difficult for competitors to design around your patent and can provide a stronger intellectual property position.

Maintaining Priority Dates

One of the key advantages of a CIP is that it allows you to maintain the priority date of your original application for the shared content. This can be crucial in the competitive world of patents, where the filing date can determine who has the rights to an invention. By filing a CIP, you can ensure that your original filing date is preserved for the shared content, while also securing a later filing date for the new material.

How to File a Continuation in Part

Filing Requirements

Filing a CIP involves several steps and requires careful attention to detail. The process typically includes:

1. Preparing the CIP Application: This involves drafting the new application to include both the original content and the new material. It's important to clearly distinguish between the old and new content in the application. When filing a CIP, I often add the new materials at the end of the previously filed application. For example, if your original application included 5 figures and you want to introduce a couple of additional figures to show new aspects or improvements, I would add those as FIGs. 6 and 7 and describe them in that order. The original FIGs. 1-5 and their descriptions remain unchanged, so you will only need to provide the descriptions for FIGs. 6 and 7.
2. Claiming Priority: Don't forget to claim priority to the original patent application. This can be done through an Application Data Sheet available on the USPTO website.
3. Paying the Required Fees: As with any patent application, there are fees associated with filing a CIP. These fees can vary depending on factors such as the size of the entity filing the application and the complexity of the new material.
4. Submitting the Application to the USPTO: The completed CIP application must be submitted to the United States Patent and Trademark Office (USPTO) along with the required fees.

Best Practices

To maximize the benefits of a CIP, consider the following best practices:

• Consult with a Patent Attorney: Filing a CIP can be complex, and it's often beneficial to consult with a patent attorney to ensure that your application is properly drafted and filed. For instance, I frequently avoid filing a CIP application or sometimes I refer to them as "part two" and instead recommend filing a new standalone application if the objective is to claim improvements. The reason for this is that a CIP shortens your patent term. The patent is only valid for 20 years from the earliest filing date, so by filing a CIP, you will lose valuable years. However, there are scenarios in which a CIP can be useful. For example, if not much time has passed since the original filing, and you want the option to claim both the new and old material, filing a CIP can be advantageous.
• Clearly Identify New Material: Make sure that the new material is clearly identified and distinguished from the original content. This can help avoid confusion and ensure that your CIP is properly evaluated by the USPTO.
• Monitor Deadlines: Keep track of all relevant deadlines, including those for filing the CIP and paying any associated fees. Missing a deadline can jeopardize your application and potentially affect your patent rights.

Real-World Examples of CIP Patents

Enhancing Existing Technologies

Consider a tech company that initially filed a patent for a groundbreaking software algorithm. After further research and development, they discovered a way to significantly improve the algorithm's efficiency. By filing a CIP, they could include the new, improved algorithm in their patent application while maintaining the original filing date for the initial algorithm. Again, keep the best practices above in mind. Sometimes filing a completely new application may be more beneficial particularly if some time has passed since your original filing.

Pharmaceuticals and Biotechnology

In the pharmaceutical and biotechnology industries, CIP applications may be used to cover new uses or formulations of existing drugs. For example, a company that initially filed a patent application for a drug for treating one condition might later discover that it is also effective for treating another condition. By filing a CIP, they can include the new use or formulation in their patent application while retaining the original filing date for the drug itself.

Potential Challenges and Considerations

Risk of Double Patenting

One potential challenge with CIP applications is the risk of double patenting, which occurs when two patents are granted for the same invention and can lead to legal complications. To avoid this, it's important to ensure that the new material in your CIP is sufficiently distinct from the original content. This concern remains valid even if you choose to file the new material as a standalone application rather than a CIP. You still need to ensure there is a sufficient difference between the new material and the previously described material in the prior filing to avoid a double patenting rejection.

Impact of CIP on Patent Term

A CIP shortens your patent term, as the patent is only valid for 20 years from the earliest filing date, resulting in a loss of valuable years. This should be kept at the forefront of your decision-making process when considering a CIP. However, if not much time has passed since the original filing and you want the option to claim both the new and old material, filing a CIP can be advantageous.

Conclusion

Understanding the concept of patent continuation in part is crucial for anyone involved in the patenting process. A CIP can provide significant advantages, including the ability to enhance your original invention, extend the scope of protection, and maintain priority dates. However, it also comes with its own set of challenges and considerations.

By carefully preparing your CIP application, consulting with a patent attorney, and following best practices, you can maximize the benefits of a CIP and strengthen your patent portfolio. Whether you're in technology, pharmaceuticals, or another industry, a continuation in part can be a valuable tool in your intellectual property strategy.

Stay informed and proactive in your patenting efforts, and you'll be well-equipped to navigate the complexities of CIP applications and secure robust protection for your innovations.