Continuation & Divisional Patent Applications – Build a Patent Family!

Well, you see two single young patents meet up with one another, sparks fly…and before long, they get married, and have a bunch of patent children crawling around! 

… I hope you’re laughing, or at least scoffing at my cheesy patent humor.  

Of course, this is not the correct portrayal of what it means to build a patent family. So, let’s get serious, (but not too serious) about this concept, and we can learn about some really cool strategies that will help you squeeze the most juice from the lemon (your invention). 

The “juice” above refers to acquiring competitive advantage in the marketplace and/or appealing more to investors/licensees/buyers of patent portfolios.

So, have you heard the term “Patent Portfolios” bandied about in the news, media, and other outlets? The term is usually associated with big companies that have acquired several patents on their technology and are doing big deals…and because of this, most think it’s not for the small/solo inventor.

Here’s just a few headlines I was able to pick up with I typed in “patent portfolio news” into Google…

Well, I’m here to tell you that YOU, the solo or small business startup, can achieve a patent portfolio too. And you can develop an incredibly valuable set of patents around the one invention you have right now. 

The High-Level Concept

You have an invention, and if you’ve done it the right way (i.e. you went Bold) you conducted a patent search, filed a provisional or a nonprovisional… 

This initial filing is also called the “parent” application. From there, many children patents can (and should) spawn from it. Thus, the multiple patent applications are called the patent family or a patent portfolio. 

There are a multitude of ways in which children patents, co-pending patents, and multi-jurisdictional patents can all stem from the initial parent filing. I’m going to explain each of these types of children patents in this article. 

The overall goal of filing children patents is to further expand the scope of protectable rights (via patent claims) under the one initial patent filing. The more rights, the more valuable the patent family, and therefore the easier it is to sell/license/enforce and make money on your invention!

And…Shhhhhh…There are even ways in which you can secure protection for your invention beyond the 20 years that you are guaranteed if you play the game right…I’ll fill you in on that too below.

So, here is an outline showing the various ways in which to file (and invest in) children patent filings in an effort to increase the value of the entire family:

  1. Divisional Applications
  2. Continuation Applications
  3. Continuation-In-Part Applications
  4. Design Patent Applications
  5. International Patent Applications

Divisional Patent Applications

These are almost always born out of what’s called a restriction requirement. These requirements are sent from the USPTO examiner’s office when they are first reviewing your patent application. For whatever reason, they find that there is MORE THAN ONE INVENTION you are seeking claim to. 

By the way, I found an incredible PDF which goes into a lot more detail about this subject, check it out here

The examiner will then require (thus “restriction requirement”) that the inventor select just one invention (and they will break out which claims of the 20) to move forward with examination for.  Usually it’s just two inventions, but sometimes there are more. 

The reason why the USPTO does this is to streamline and standardize the patent search and examination process. If the claim scope covers too much, then the examiner will spend too long searching different fields or classes, and then they will get backlogged and delays will occur. 

Also, the USPTO wants to get paid…so they don’t want to overdeliver. They want inventors to pay the filing fee for each invention, not to try to sneak more than one invention in under one filing fee.

Now, there are ways to argue this restriction (called “traversing”), but that goes beyond the scope of this article. 

So, for example, if you have 20 claims to start with, and you elect Claims 1-9 to move forward with into examination, that means that Claims 10-20 are now restricted from moving forward. 

So, you need to file a divisional patent application covering Claims 10-20. Remember, this will be nowhere near as difficult as drafting the parent patent application. In fact, you get to use the ENTIRE specification (written description and drawings) from the parent application. 

You will want to reformat the claims and renumber them to be 1-10, and usually you’ll want to expand the claims to cover more specific subject matter to get a full set of 20 claims. 

Now, when you add new claims, it often means that a revision/modification/addition of the specification is needed, so be sure to have coverage for all terms used in the spec to meet 35 USC 112 rules. You don’t have to file the divisional right away, but most inventors do. 

So, what you would end up with is two patent applications that are both pending:

  • Parent Application (covering original claims 1-9)
  • Divisional Application (covering original claims 10-20)

We will carry this example through to the next type of child patent, the continuation application

Continuation Patent Applications

These are applications that are based on the same core specification/written description/drawings as the parent application but differ in what is being claimed. 

Straight continuations (as opposed to their continuation-in-part counterparts) by definition do not disclose new subject matter, but instead just make new (and usually broader) claims on the same invention. 

There are many reasons to file a continuation. Most include the desire to get the most out of the invention as possible, and to maximize the scope of rights under one parent application. It is very difficult to get the entire scope of rights protected in one “claim set” which usually covers one or two types of claim structure. 

An example of the claim structure is to have a device/apparatus claim as the first independent claim, and then a method of use claim as the other independent claim. If there is reason enough (based on market studies or actual success in the market) to go after a new type of claim where the invention can be described with other articles or devices/processes then you must file a continuation application to try to claim this expanded/new article. 

There are no limits to how many continuation applications you can file. And in our example from above, you could have the following situation:

  • Parent Application (covering original claims 1-9)
    • Continuation of Parent Application Covering new claims 21-40
  • Divisional Application (covering original claims 10-20)
    • Continuation of Divisional Application covering new claims

The most important thing to consider about continuations is that if there is a reason to expand to a new filing that MUST BE MADE PRIOR TO THE PARENT APPLICATION ISSUING. 

I cannot emphasize that enough, as the timing is crucial. So, here’s an illustration of what should happen:

  1. Parent Application filed
  2. Parent application prosecuted with Examiner
  3. Examiner issues a Notice of Allowance on the parent application
  4. Continuation Application is filed
  5. Issue Fee is paid for Parent Application
  6. Parent Application is Issued

Now, if Step #4 is attempted after #6, the patent office will reject the application on grounds that it is ineligible because the parent is already issued. As a matter of course, our firm has a firm ground rule that we don’t even pay the Issue Fee (step #5) until we file the continuation(s) for the parent. There is a 4-8 week lag from when the issue fee is paid to when the patent is officially issued. 

Continuation-In-Part

Much like the continuation application from above, the Continuation-In-Part (abbreviated as CIP), utilizes the parent patent application for much of what it will claim. The key difference is that “in-part” part…haha. This means that there is at least some aspect of the CIP claim set that was not disclosed in the parent application

Therefore, CIP’s always mean that an update to the specification, drawings, and claims (usually all three) is required. 

There is no hard and fast rule about how much of the original parent patent application needs to be within the new CIP application, but there must be a clear/obvious common tie between the two applications to keep them within the same family. 

The best example of this type of application is for a product that begins making sales in the market after filing the non-provisional/parent application has been filed. Customers begin noticing that one or more aspects of the invention have problems and after problem-solving/inventing, you’ve come up with a new feature/functionality of your invention that dramatically improves the workability of the invention…what do you do?

You could simply file a new patent application covering this new improvement. However, a big problem will be that the examiner will actually use your own invention as prior art against you!!! The improvement may be new, but it is arguable (in many cases) that the improvement was so subtle, and would be an obvious version of the parent application’s description. 

Thus, the goal of the CIP is to avoid an obviousness-type rejection based on double-patenting. This is achieved by pointing back to the parent application, clearly pointing out what distinguishes it from the patent filing, and claiming the new subject matter. 

Now, you can’t always get away with a CIP for a full 20-year term. Typically, examiners will make you file a terminal disclaimer where you will limit the term of the CIP to the same as the original patent application. 

In addition, there are often many challenges as to 102 novelty there because the information now being claimed under the CIP doesn’t get the priority date of the parent filing…so more inventions/disclosures have occurred since the filing of the parent filing. 

The big upside for CIPs is that you begin to develop a much broader claim set and valuable invention coverage because you now basically get a patent on the new subject matter.

Design Patent Application

So, with divisions, continuations, and continuations-in-part, you’ve REALLY well covered your utility patent application – kudos to you! 

Another important way to broaden protection your invention is to seek design patent protection too! This avenue is only open for those inventions that are “three-dimensional articles of manufacture…” This is fancy for saying that it must exist in the real world and have a shape/design that is novel/non-obvious. 

Design patents have really picked up in popularity by inventors that wish to maximize the enforceability of their inventions when they hit the market. Oftentimes, looks/appearance is the first way that rip-off artists try to steal the goodwill/effort of inventors. So it’s a great idea to get both utility patent protection (covering the functional benefits of the invention) and a design patent (covering the aesthetics of the invention/device). 

As a quick aside, I broke down the key differences between design patents and utility patents in my blog article here. Enjoy! 

Design patents aren’t just increasing in popularity. They are having BIG successes in federal court based on massive infringement cases. The biggest recent case is Apple v. Samsung case that settled for nearly $.5B!!!

Here’s a great way to build your patent portfolio if you’ve already filed your parent utility application. You can (and, especially if it’s a hardware product, SHOULD) file a design patent application before the parent application issues. 

The beauty of this is that you can claim the EARLY priority date of the utility filing, as long as you disclose the designs in your utility drawings when you filed either your provisional or nonprovisional application. 

The best practice here (to preserve future ability to file design patents to build your portfolio) is to make sure to have plenty of drawings filed for your utility patent application so that you preserve the ability to later file a design patent application covering the aesthetics later. 

International Application

The last main area to expand your invention’s patent family is to go international! This adds a huge layer of complexity and, yes, big investment of capital not only to acquire the international rights but to enforce them. 

That said – filing internationally allows you to multiply the efforts you’ve made domestically in growing the utility filings (divisionals/continuations) and design filings. The two most common methods for inventors to use that helps to ease the stress/burden of filing internationally is to take advantage of the multi-country treaties available:

  1. Patent Cooperation Treaty (PCT): This allows inventors of utility patent filings who are part of a member country (and there are over 100 member countries) to file and have a search conducted simultaneously across the world – saving time/money
  1. Hague Agreement: Allows inventors of unique designs to save time/money if they are seeking protection in several countries.

Summary

So, building a portfolio of patents is quite important mainly to assure that you’ve properly captured all that you’ve invented. The examiners at the various patent offices will always be biased toward limiting the scope of rights you are given, as they are incentivized to do so. 

You should aggressively advocate securing the rights you deserve by getting the full scope of your innovation. This is best achieved by developing a portfolio of filings as I’ve outlined above. 

To recap, the various ways in which to file and invest in children patent filings to increase the value of the entire family are:

  1. Divisional Applications
  2. Continuation Applications
  3. Continuation-In-Part Applications
  4. Design Patent Applications
  5. International Patent Applications

As always, remember to go big and go bold! How will you strengthen your IP protection through a patent family?

Legal Note: This blog article does not constitute as legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.

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