Make Use of Continuation in Part

Jethro L Bennett

Inventor, Professional Product Designer, Elite Patent Specialist
Creator of The Inventor's Journey™
Captain of SHIINE® ENTERPRISE

Captain's Blog

What is a Continuation-In-Part Patent Application?

Not Relevant To UK/European Patenting

The term 'Continuation-In-Part' (patent application) is a USPTO term, and is a special type of patent application that can be filed at the USPTO. A 'Continuation-In-Part' patent application does not exist, and cannot be filed, in the UK/European patent system. So this post is relevant to U.S. patenting, and not UK/European patenting.

After you've filed a non-provisional patent application, if you want to 'continue' the process, by filing a new patent application based partially or wholly off the non-provisional patent application you've filed, there are 3 options. (For a blog post and video about the 3 different options (ie types) of U.S. continuing patent application you can file, see this post).

One of those options is to file a Continuation-in-part (CIP) patent application.

So What Is a Continuation in Part patent application?

A continuation in part patent application is one of the 3 types of 'continuing' patent applications in the US patenting system. Therefore it's a non-provisional patent application, and can only be filed if you've already got a USPTO non-provisional patent application filed, and that previous non-provisional is still pending, (ie has not been granted, or abandoned)

What's the point in filing a Continuation in Part patent application?

In The UK/European patent system, you cannot 'add' anything to a patent application once it's filed. (In fact, that's the same at the USPTO, and in ALL patent systems). But the USPTO lets you do the next best thing- as long as your present non-provisional patent application is PENDING (ie hasn't gone to grant or been abandoned yet), you can file a NEW non-provisional patent application, (called a Continuation-In-Part patent application), and can have all of the content of your PREVIOUS non-provisional patent application, and also ADD NEW STUFF to it. (See the video above for an example of this, with SPOON).

What's the benefit of this to me?

Basically, you get the best of both worlds- not only can you add 'new stuff' into your continuation in part patent application, but your continuation in part patent application is also in the same CHAIN OF PRIORITY as your previous application, meaning that if you then decide, in your continuation in part patent application, (rather than trying to patent the 'new stuff'), to try to patent something that was already in (and fully supported by) your previous non-provisional, you get the benefit of the earlier filing date of your previous non-provisional, for that claim.

So it's all good news.

When Will I use this?

Continuation in part patent applications are very common at the USPTO. The video above gives a good example of when you might use it. Imagine you had invented SPOON, and filed a full non-provisional relatively early. But then you came up with that great idea (!) of the user means on the top of the handle, which is the absolute perfect way to make the invention work, in the best way possible for the user. What you might do, at some point, is file a continuation in part patent application, which has ALL THE DISCLOSURE of your previous non-provisional patent application, but ALSO includes the NEW STUFF (of the user means on the top of the handle, for example).

In this way, you retain all the ability to get the EARLY FILING DATE of your previous patent application for any claim(s) in your CIP, (or a future continuing patent application filed off of your CIP), and also have the ability to claim the NEW STUFF in that CIP.

Just remember, though, when you add NEW STUFF in a CIP, when you claim that new stuff for patent, you will NOT get the early filing date for that claim(s), because that new stuff was NOT in the previous patent application. So that 'new stuff' will only get the filing date of the first time you filed for it, (ie the filing date of your CIP when you first mentioned it). Nevertheless, if no-one else has invented that 'new stuff', it's unlikely the later filing date is going to hinder you in any way.