Continuations of the Patent Application Process

During the process of applying for a Patent, an inventor may determine that what has been filed could be considered more than one patentable idea. After the USPTO has issued its final rejection, an inventor may still believe that the application that some or all of the application merits a patent. The USPTO has several processes that that these situations into consideration and these are described below.

A Divisional Application is used when the inventor determines, during the prosecution of a patent application, that an independent or distinct invention can be carved out of the application. In order for the divisional application to be valid, the divisional application must claim the benefit of the prior nonprovisional application and can only claim subject matter disclosed in the earlier application.

A Continuation Application is a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented. A Continuation Application may introduce a new set of claims and to establish a right to further examination by the primary examiner. The requirements for the filing of a continuation application are as follows:
 
  • The Continuation Application must include at least one inventor named in the prior nonprovisional application;
  • The disclosure presented must be the same as that of the original application; and
  • The Continuation Application must claim the benefit of the prior nonprovisional application.
A Continuation-in-Part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application. In order for the Continuation-in-Part application to claim the benefit of the prior nonprovisional application, the following conditions must be met:
 
  • The first application and the Continuation-in-Part application were filed with the same inventor or at least one common joint inventor;
  • The alleged Continuation-in-Part application was filed before the patenting or abandonment of or termination of proceedings on the previous application; and
  • The alleged Continuation-in-Part application contains a specific reference to the earlier filed application.

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