Protecting the part and the whole?

The US system for continuation-in-part can provide companies with an alternative method of protecting their innovations. Stephen Albainy-Jenei outlines the process

As companies well know, the invention process is not always an all-or-nothing proposition; instead, inventors often make gradual changes that can lead to big and small advances in the technology. Therefore, it is often the case that an inventor will think of ways to improve the invention after an initial patent application is filed, particularly when an application is filed early in the process.

In the US, patent law prohibits adding new matter to a patent application, which means that another patent application must be filed on the improved invention. However, the patentability of the new, improved invention can depend on the publication, inventorship and ownership status of the initial application. This can be difficult where more than one year has passed since the priority date of the original patent and/or a regular or international patent application is still pending. Fortunately, such patentability problems can be overcome – at least in the US – by filing a continuation-in-part (CIP) patent application.

IN THE US, PATENT LAW PROHIBITS ADDING NEW MATTER TO A PATENT APPLICATION, WHICH MEANS THAT ANOTHER PATENT APPLICATION MUST BE FILED ON THE IMPROVED INVENTION

A CIP is an application filed during the pendency of an earlier non-provisional application, and generally includes some or all of the earlier disclosure while adding new subject matter that was not disclosed in the earlier application. This new matter can include not only the addition of a wholly new subject matter, but may also add specific elements, percentages or compounds that were not mentioned in a broader original disclosure.

Is it obvious?
Companies and inventors are often unsure as to when to file a CIP as opposed to an additional patent application. However, in addition to the scenarios outlined above, there are a number of situations in which a CIP provides the most sensible option. These include cases where an applicant needs to add information showing unexpected results of a previously disclosed invention, particularly where the unexpected results are linked to a utility that was not disclosed in the original specification as filed. In addition, companies should also use the system to add new aspects of an invention prior to international filing.

Although you can leave a parent patent application pending to obtain early claims to issue, the parent is often abandoned in favour of the CIP. That’s because filing a CIP will delay the opportunity to initiate an infringement action based on the original patent claims. However, filing a revised application as a CIP could also raise concerns regarding the validity of the original application. This means that the CIP and any patent obtained on it may be vulnerable to challenge during the examination process or in cases of litigation.


Stephen Albainy-Jenei is a patent attorney at Frost Brown Todd LLC and the founder and editor of the Patent Baristas weblog


This article first appeared in IP Review, issue 26