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Continuation application

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Definition Edit

U.S. patent law Edit

A continuation application (also called a continuation) is a second patent application filed for the same invention claimed in a prior nonprovisional application. Continuations may be filed following either the rejection or the allowance of claims. During the patent prosecution process, a patent examiner considers the claims and arguments presented by the applicant in deciding whether to allow or reject the claims of the patent application. Upon the second examination, the examiner may make a rejection “final.” The applicant has several options following this “final rejection,” including abandoning the application, appealing the rejection to the PTO’s Board of Patent Appeals and Interferences, or filing a continuation.[1]

Overview Edit

A continuation application refers back to and receives the benefit of the filing date of an earlier-filed parent application, pursuant to 35 U.S.C. §120.[2] The Patent Act allows requests for continued examination of an application for which prosecution would otherwise be closed at 35 U.S.C. §132(b). An application subject to continued examination retains the benefit of its earlier filing date.[3]

By filing a continuation, the applicant obtains the examiner’s further consideration of the claims. Applicants may offer amended claims, new evidence, or new arguments supporting patentability in the continuation. The continuation receives the benefit of the earliest filing date in a string of continuations, meaning that public disclosures after that earliest filing date cannot serve as prior art to threaten the validity of the claims. Moreover, a patent applicant need not face a “final rejection” in order to file a continuation.

He may also file after the examiner has allowed the claims, and the applicant expects those claims to issue. In that case, the continuation may be used to pursue additional patents having claims of varying or different scope than the allowed claims, to obtain claims that more closely track his competitor’s products, or for any other reason.

Technical requirements Edit

Section 120 of the Patent Act[4] imposes several technical requirements that must be met with respect to continuation applications. First, the continuation application must be filed prior to the patenting, abandonment, or termination of proceedings of its predecessor application. Second, the predecessor and continuation application must have at least one inventor in common. Third, the continuation application must expressly identify the predecessor application.

Finally, to be entitled to the benefit of the predecessor application, claims within the continuation application must be fully supported by the technical disclosure found within the predecessor application. Claims that reference “new matter” found in the continued application, but not in the predecessor application, are entitled only to the actual filing date of the continued application. Such an application is termed a “continuation-in-part,” or CIP application.[5]

References Edit

  1. See 37 C.F.R. §§1.113, 1.114, 41.31.
  2. See 37 C.F.R. §1.78.
  3. See 37 C.F.R. §1.114.
  4. 35 U.S.C. §120.
  5. See also Leesona Corp. v. Varta Batteries, Inc., 522 F. Supp. 1304, 1335 n.153 (D. Del. 1981) (“by definition continuation-in-part applications add matter not disclosed in earlier applications. But, in the face of intervening art, any “new matter” disclosed in a continuation-in-part application cannot be accorded a filing date earlier than the date of filing of the continuation-in-part application.”).

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