“Once the CIP application adopts the later filing date, the CIP application and its children become vulnerable to rejections based on a larger pool of prior art — including former parent applications in some cases.”
In Part I of this five-part guide to U.S. subsequent patent applications, the authors reviewed the law governing such applications. In Part II, we review the different types of subsequent applications.
A continuing patent application is “an application filed subsequently to another application, while the prior application is pending, disclosing all or a substantial part of the subject-matter of the prior application and containing claims to subject-matter common to both applications, both applications being filed by the same inventor or his legal representative.” In re Febrey, 135 F.2d 751, 757 (CCPA 1943) (internal quotation marks and citation omitted). 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.” Antares Pharma, Inc. v. Medac Pharma Inc., 771 F. 3d 1354,1358 (Fed.Cir. 2014) (emphasis added), citing MPEP § 201.07 (9th ed. Mar.2014); see also 37 C.F.R. § 1.53(b). “A continuation application claims the same invention claimed in an earlier application” and the application constitutes “one continuous application for the continuing subject matter recited therein.” Transco Prods. Inc. v. Performance Contracting, Inc., 38 F.3d 551, 555 (Fed. Cir. 1994) (quotation omitted). Note that this means that a continuation application differs from a divisional application which is directed to a perhaps related, but not the same, invention.
Continuation applications can be filed to broaden or focus approved claims, claim material for the same invention that was not claimed in approved claims but which is supported by the specification, or the like. This is important in part because subject matter disclosed but not claimed is deemed dedicated to the public. Eli Lilly and Co. v. Hospira, Inc., 933 F.3d 1320,1330 (Fed. Cir. 2019), citing Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046,1054 (Fed. Cir. 2002) (en banc). By its nature, the priority of a continuation application is identical to that of the application from which it is a continuation.
As noted above, to qualify as a continuation application and claim the benefits of the earlier parent application’s priority date, the continuation application must be made while its parent is still pending, expressly refer to the parent application, identify at least one common inventor, and encompass the same disclosure of the parent application without adding any new matter.
Continuation-in-part (CIP) applications highlight a trade-off between priority and patent term. “A continuation-in-part is an application filed during the lifetime of an earlier application by the same applicant, repeating some substantial portion or all of the earlier application and adding matter not disclosed in the earlier case.” Manual of Patent Examining Procedure (“MPEP”) § 201.08 (5th ed., Rev.15, 1993) (emphasis added); see also MPEP § 201.08 (2015). Note that matter may be added by subtraction; for example, if the parent application describes a “round hole”, removal of the word “round” will “add” holes of other shapes. In CIP applications, priority is assessed on a claim-by-claim basis. Transco Prods., 38 F.3d at 557 n.6. An applicant can obtain an earlier effective filing date for claims in a CIP application only if those claims find 35 U.S.C. 112(a) support in an earlier-filed nonprovisional application, except for the best mode requirement. Id. Claims reciting new matter, however, are entitled to only the filing date of the CIP application and not to the filing date of the earlier-filed application. Id.
However, because the standard patent term is now 20 years after an application’s earliest-claimed priority date, see 35 U.S.C. § 154(a)(2), CIP application claims reciting new matter are not entitled to the parent application’s earlier filing date but, instead, may have a truncated patent term (i.e., less than twenty years). An uncommon but permissible way for patent applicants to avoid losing term on claims that recite new matter is to disclaim the benefit of earlier filing dates. See MPEP §§ 211.02(a)(III). Thus, by deleting the benefit claim in a CIP application, the 20-year patent term of the patent issuing from that CIP application could extend from the CIP application’s filing date instead of the parent application’s earlier filing date.
Of course, once the CIP application adopts the later filing date, the CIP application and its children become vulnerable to rejections based on a larger pool of prior art — including former parent applications in some cases. See, e.g., Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1352 (Fed. Cir. 2012) (finding that “[d]ue to breaks in the chain of priority,” the “[parent] patent [was] prior art for some of the asserted claims”). Also keep in mind that filing a new, independent application rather than a CIP may be warranted, as discussed later in this series.
Because a patent can claim but a single invention, UCB, INC. v. Accord Healthcare, Inc., 890 F. 3d 1313,1323 (Fed. Circ. 2018), “[i]f two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action will require the applicant in the reply to that action to elect an invention to which the claims will be restricted, this official action being called a requirement for restriction (also known as a requirement for division).” 37 C.F.R. § 1.142(a) (emphasis added). In such cases, a divisional application is a type of continuing application directed to a different invention than its original application and is intended for use with “distinct invention[s], carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.” Antares Pharma, Inc. v. Medac Pharma Inc., 771 F. 3d 1354,1358 (Fed.Cir. 2014), citing MPEP § 201.06; see also 37 C.F.R. § 1.53(b). Along these lines, the Federal Circuit has held that “[p]lain common sense dictates that a divisional application filed as a result of a restriction requirement may not contain claims drawn to the invention set forth in the claims elected and prosecuted to patent in the parent application.” St. Jude Medical, Inc. v. Access Closure, Inc., 729 F. 3d 1369,1377 (Fed. Cir. 2013) quoting Gerber Garment Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683, 687 (Fed.Cir.1990).
An application designated as both a CIP and divisional application, at the very least under the current revision of the MPEP, was most likely improperly designated as such. See MPEP § 201.06 (2015) (“A continuation-in-part application should not be designated as a divisional application.”). It is possible, of course, to file a CIP application of a divisional application or of a continuation application, and it is also frequently the case where “serial” divisional applications may be filed, either according to the restriction requirement in the parent, or according to a “new” restriction requirement. Moreover, one can file a CIP application of more than one parent. See, e.g., the Related Applications section of US Pat. No. 7,195,084: “This is a continuation-in-part of U.S. application Ser. No. 10/392,285 filed Mar. 19, 2003 now U.S. Pat. No. 6,936,092, and Ser. No. 10/764,825 filed Jan. 26, 2004 now U.S. Pat. No. 6,988,567, which applications are incorporated fully herein for all purposes.”
With respect to restriction requirements and its cousin election of species, there seem to be two primary camps or strategies among patent practitioners. In one camp are those who advocate traversing all restriction requirements and elections of species. One of our colleagues lays out a very good strategy for this type of traversing (for example, arguing misclassification, no search burden, lack of support for the requirement, etc.). Neifeld, R., “Continuation Applications, RCEs, Appeals, Petitions, Interferences, Public Use Proceedings, Determinations, and Oppositions”, AIPLA “How to Manual”, Chapter 13 (“Neifeld”). The other camp advocates not formally traversing (but nonetheless making arguments why the claims should not be split up, especially the “no search burden” argument, for example when methods and apparatus are classified identically) and saving their ammunition and powers of persuasion for arguing any downstream patentability issues. The authors do not specifically endorse or deny either approach, as each may be useful in specific circumstances, and each has their pros and cons.
In Part III, we will discuss the implications of these different types of subsequent patent applications for potential litigation down the line.
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