Eight Steps to Success in Navigating Subsequent Patent Applications in the United States

By Gary Maze & Jeffrey Wendt
January 6, 2021

“Be selective in use of continuation-in-part (CIP) applications, given the surrender of term. If the new matter gives rise to an invention that is not obvious or anticipated by the earlier application, consider filing a new application as opposed to a CIP.”

https://depositphotos.com/56805445/stock-illustration-stairs-isolated-on-white-background.htmlIn Part I of this five-part series, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. In Parts III and IV we discussed various implications of the types of subsequent applicants. And now, in Part V, we provide practice tips drawn from the case law cited in this series, as well as derived from omphaloskepsis.

Steps for Success

  1. If a client has limited funds or strategic reasons to file a single application but wishes to eventually claim multiple more-or-less related inventions, you may opt to place as much enabling disclosure into a single application to support each of the multiple inventions and then, as opposed to filing continuation applications, include at least one claim (preferably an independent one) for each invention, thereby triggering a restriction. Cancel all but one identified group and leave the rest for divisional applications. As an alternative, do not traverse a restriction/election, but keep the non-elected claims and indicate them as “withdrawn,” or, if amended, “currently amended.” In the writers’ experience, when allowance is reached on the elected claims, the examiners are frequently more willing to rejoin non-elected, amended, withdrawn claims (or at least some of them), lessening the number of divisional applications required. As a side note, such a strategy can aid with foreign applications, e.g., European Patent Office (EPO) applications, if such are to be pursued. Note that the EPO, as well as Japan, Canada, and China, allow divisional applications. Keep in mind that the “safe harbor” provision of Section 121, in certain circumstances, protects a patent that issues on a divisional application from invalidation based on a related patent that issued on an application as to which a restriction requirement was made or on an application filed as a result of such a requirement and that “the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications,” not from a continuation-in-part (CIP) application.
  2. Limiting each divisional application to claims addressing a single group identified by the examiner in the parent application is one strategy, and may be required if the inventive entity is different for each group of claims identified in the restriction requirement.
  3. If the client wishes to limit the number of claims for a single application, review the claims to see if multiple claim sets directed to the same invention are warranted, e.g., one set for an apparatus and one set for a method. If so, select one of the claim sets for initial prosecution and pursue the remainder in subsequent continuation applications. Apparatus claims for mechanical inventions, and chemical or biological composition claims, are generally agreed by experienced practitioners to be more valuable than method of making and method of using claims, so that may guide the selection of initial claims to prosecute. However, method claims may be easier to prosecute to allowance, and may provide the “forward momentum” mentioned herein. Keep in mind that matter disclosed but not claimed is dedicated to the public. Consider use of “linking” claims to reduce the potential for restriction and to reduce drafting cost. For example, Claim 1 may define a complex combustion burner, Claim 10 may recite simply “a furnace comprising the burner of Claim 1”, and Claim 20 may recite “A method of using the furnace of Claim 10 to melt iron to produce steel.”
  4. Be selective in use of CIP applications, given the surrender of term. If the new matter gives rise to an invention that is not obvious or anticipated by the earlier application, consider filing a new application as opposed to a CIP. However, if the client wishes to also pursue claims fully supported by the earlier application and the new matter is best suited for dependent claims, a CIP application may be the better route. CIP applications may also be useful when a client wishes to present more data, such as in complex chemical or biotechnology inventions. However, pharmaceutical inventions will benefit from longer patent terms, especially if the pharmaceutical is successful in the marketplace. Some drugs may command revenues in the hundreds of millions of dollars per day, making surrender of any patent term unwise.
  5. Include all references to prior applications in an application data sheet (ADS) and, although no longer required if present in the ADS, amend the written description to contain each such reference in the first sentence(s) following the title, and include the heading “Cross-reference to Related Applications.” Consistent with 35 U.S.C. § 120 and 37 C.F.R. § 1.78, the MPEP provides detailed guidance on how to claim priority from multiple prior-filed applications. It states that “[t]he reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or CIP) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications.” MPEP § 201.11 III.C.[3]. Although such a chain should be specified upon filing the subsequent application, amending an application to change its relationship to a prior-filed application should take place as soon as possible, or be included in an ADS, since the ADS listing will control, and changes by petition after USPTO designated time periods may be very expensive. Note that reference to non-U.S. applications (other than PCT or international design applications) MUST be made in the first sentence following the title of the specification. For IDS practice, it is customary to cross-reference a client’s other patent applications that are not related as parent, continuation, divisional, etc., if the subject matter covered by those applications may be considered related. Use a conservative, but common sense, approach. Carrying on with the theme from above, one may take the position that, at some level, jet engines and kitchen gas stoves are both “combustion apparatus,” but they are hardly related enough in subject matter in most cases to worry about whether they are “related” for patent purposes. They are “non-analogous arts.”
  6. Be careful about surrendering claim scope in any of the related applications, especially if limitations at issue are the same or highly identical to each other across the patent application family.
  7. Avoid expansive language in a terminal disclaimer, e.g., do not disclaim any and all term portions “of any patent granted on the above-identified application or on any application which is entitled to the filing date of this application under 35 U.S.C. § 120.”
  8. Double-check inventorship of a subsequent application to make sure that only the required inventors are named (and have filed declarations).

In summary, continuation applications and their implications, limited by the co-pendency requirement of 35 U.S.C. § 120, present both opportunities and challenges. Continuing applications provide avenues for tactical and strategic planning for applicants. Planning and forethought can maximize the value of a patent or patent portfolio. However, though there are gains to be had, avoidable pitfalls also exist.

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The Author

Gary Maze

Gary Maze the president and founder of the Maze IP Law, P.C. law firm, is a member of the National Association of Patent Practitioners and has practiced intellectual property law in since 1995. His experience includes preparation and prosecution of patent and trademark applications; patent, trademark, copyright, and trade secret litigation; licensing of intellectual property rights; and legal opinions regarding infringement, enforcement, and/or validity of intellectual property rights. Mr. Maze’s patent prosecution experience includes subsea oil and gas production intervention tools, software and computer related systems, electromechanical devices, and medical devices.

Gary Maze

Jeffrey Wendt is president and founder of The Wendt Firm, P.C. With a background in chemical engineering, working experience as an engineer, and intellectual property law, Mr. Wendt is particularly trusted by those working in the materials processing, medical device, and energy sectors (conventional and renewable), as well as startup businesses and entrepreneurs providing unique solutions to diverse problems. Mr. Wendt is a current member, former president, and former board member of NAPP, the National Association of Patent Practitioners, as well as the Austin and Houston Intellectual Property Law Associations, and is a master of the bench member of the Honorable Nancy F. Atlas Intellectual Property American Inn of Court.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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There are currently 2 Comments comments. Join the discussion.

  1. MaxDrei January 6, 2021 10:53 am

    Being in Europe, my eye was caught by:

    “….such a strategy can aid with foreign applications, e.g., European Patent Office (EPO) application”

    I would go further than “can aid”. For me “such a strategy” is the only one that will preserve the opportunity to get to issue, outside the USA. Why? Because i) nowhere else but the USA has continuations and C-i-P’s ii) when prosecuting a div, outside the USA, one needs WD in the parent and iii) in the FtF part of the world, the WD requirement is strict. Absent that WD, all those div’s are simply going to crash and burn.

  2. Pro Say January 10, 2021 12:55 pm

    Excellent, important, keeper-for-sure series guys — thanks much for all your time and effort.

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