Posts Tagged: "continuation applications"

Patent Prosecution Tip: File Your Continuation and Divisional Applications Prior to or With Payment of the Issue Fee

The United States Patent and Trademark Office (USPTO) sent out an email alert on March 16, 2023 about its transition to eGrants for patents. This change to electronic patent grants as opposed to paper patents is in accord with the USPTO’s continued changes to an all-electronic and no paper system. Prior changes have included all-electronic office actions, and of course the USPTO’s EFS-Web system, in which filings are made electronically with the USPTO. One important thing to realize is that a patent may grant very soon after payment of the issue fee, so if the Applicant desires to have a continuation, continuation-in-part (CIP), and/or divisional application filed (all such applications are referred to as “continuing applications”), they should really do so before or at the same time the issue fee is paid, in order to maintain the pendency with the to-be-issued patent.

Tips for Filing Divisional/Continuation Applications in China Versus the United States

Over the past decade—and likely for the rest of our lifetimes—China has become a favored venue for patent filings due to its increasing GDP and expansive market. However, U.S. applicants familiar with U.S. patent rules should be careful not to employ the same prosecution strategies as used in the United States when filing Chinese patents, as the rules in the two jurisdictions are materially different. For example, in the United States, it is common to file a string of continuation applications for inventions that are licensing/litigation worthy. In China, there is no corresponding opportunity.