Continuation Applications

 A “continuation” is a patent application that claims priority to an earlier-filed application (often referred to as a “parent”) and shares the same written description. US patent law differs from much of the rest of the world by allowing an unlimited number of continuations, with no restriction on when they are filed, so long as there is at least one application still pending. If you are considering sale, and you have an allowed US patent application that is about to issue as a US patent, you have the option to file a continuation application.

Keeping a pending US application on file is highly useful in any licensing or enforcement campaign. For sale projects, an issued US patent and a pending US application is more attractive to buyers, compared to only issued patents. A pending continuation application allows the patent holder to:

• pursue claims that differ from the inventor’s original vision;
• remove unnecessary narrowing limitations without the complications of a broadening reissue (which must be filed within 2 years of issuance of the patent, requires surrender of the issued patent, and creates intervening rights in third-parties that have begun to practice the claimed invention); and
• overcome prior art references that come up later, or that a patent buyer, licensing target, or litigation defendant has in mind.

A continuation application can be filed anytime before your patent issues. After the last application issues as a patent, the patent holder is no longer able to file a continuation and is left with limited options to alter the patent scope, test the patent against newly discovered prior art, or fix mistakes made in the patent’s prosecution. It may not be too late to preserve your patent specification’s value.

For a valuable patent family in field of interest, the cost of filing a continuation is negligible compared to the potential value you could realize through licensing or sale. Also, the costs of filing can be deferred for several months and filing fees accrue only if you decide to move forward with the continuation application.

A continuation application can be filed without paying any upfront filing fees to the US Patent Office. If you later decide not to pursue the continuation application, you can simply not pay the fees, and the application will go abandoned.

Very little attorney time is required just to file a continuation application. Eventually, new claims must be drafted, but they can be added later. A continuation filing can be completed with the original claims. If you decide not to proceed with the application, there is no need to draft new claims.