Patent applications sometimes split into ‘continuing applications’ – or applications which depend from earlier filed applications. A continuing application may result from many of various circumstance, but always depends from a parent application. The two (or more) applications can be prosecuted simultaneously, or one may be issued or abandon while the other continues prosecution. In many cases, a continuation application will have an identical disclosure with respect to the parent application including description and drawings while having a separate claims set. In this way, many claims may be granted on the same description – and those claims sets may each have a separate examination, examiner, and patentability argument. Since, a continuation application may have assigned the same or different patent examiner, the examination process may be very different from the parent application.
A ‘divisional’ type patent application is in effect a continuation application. When a single patent application is reviewed by a patent examiner, and that patent application appears to include two distinct patentable concepts, a patent examiner sometimes forces a ‘divisional’ application upon the applicant. Two separate classes of claims are declared and each are prosecuted under independent cover. The final result will be two (or more) patents – one patent each for each patentably distinct claims set. A divisional application comes at the insistence of the patent office, while other forms of continuation come via the request of the applicant.
Sometimes, when a patent application is already filed and new additional concepts follow or new important description supports earlier presented patentable concepts, then a ‘continuation--in-part’ patent application may be the correct form of a continuation patent application. In a continuation-in-part application, a new specification or modifications to the old specification include new matter not presented in the earlier filed patent application. New matter is strictly not allowed in a continuation application. The filing date of the continuation-in-part application is the original filing date for the originally disclosed matter, but the later filing date for the new matter. Matter introduced late does not gain the benefit of the earlier date.
Limits on Continuation Practice
The patent office very nearly set limits on the number on continuation applications that could be filed. However, at an ‘11th hour’ decision, the commissioner withdrew rules directed as such limits under threat of litigation. It was strongly argued that the commissioner does not have the right to limit the number of applications an applicant wishes to bring. Congress has this power, however the commissioner cannot make rules inconsistent with law set forth by congress. Presently, we are allowed to file as many continuation applications as desired by the applicant.