Continuation, Continuation-in-Part & Divisional Application

An initial patent application can be linked in form or Continuation, Continuation-In-Part (CIP), and Divisional applications, claiming priority of the initial application, which will serve as a parent application. Only a non-provisional application qualifies as the parent application.  These three application types enable an inventor to modify different aspects of the parent application by submitting a new application that claims benefit of the parent, as well as its filing date.

Continuation Application
A Continuation allows an inventor to add new claims within the initial disclosure of its parent application. The Continuation needs to be filed prior to the issue fee payment of the parent application and prior to abandonment of the parent application. The Manual of Patent Examining Procedure (MPEP) explains that “at any time before the patenting or abandonment of… his or her earlier nonprovisional application, an applicant may have recourse to filing a continuation in order to introduce into the application a new set of claims and to establish a right to further examination by the primary examiner.”

Continuation-In-Part (CIP) Application
A CIP gives inventors the ability to adjust the specification of the parent application. MPEP describes a CIP as “an application… repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.” This allows inventors to include enhancements to the original design that were developed after the parent application was filed. As the invention in the CIP is mostly the same as the invention in the parent, but new material may also be added to depict the improvements. The key is that claims in the CIP is entitled to the filing date of the parent application. However, claims that are related to subject matter that is introduced in the CIP are only entitled to the filing date of the CIP. While this may appear to make CIPs ineffective, it’s important to remember that the new subject matter is usually closely related to the material from the parent application. The ability to protect the contents of the parent application in the CIP may be very critical if, for example, the new matter absolutely cannot work without them. This situation may not be uncommon, as the intended purpose is to allow inventors to submit improvements that are built upon the original invention.

Divisional Application
Unlike the previous two application types, Divisional applications are usually the result of a restriction requirement made by an examiner in an Action of the USPTO. A patent application requires something known as “unity of invention.” In other words, an inventor may not file an application that contains multiple, different inventions since a single patent application is to secure protection of a single inventive concept. Thus, each patent application must be strictly focused on a single invention or “a group of inventions so linked as to form a single general inventive concept,” according to MPEP. If an application does not have unity of invention, the examiner may ask the applicant to elect claims encompassing a single inventive concept. The applicant is allowed to file a divisional application with the claims not elected in the parent application.  “There may be no departure therefrom in substance or variation in the disclosure that would amount to ‘new matter’ if introduced by amendment into the parent application,” according to MPEP, which goes on to explain that the Divisional is “carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.” A Divisional application simply takes a section of the parent application’s claims and moves them into its own application that retains the parent’s filing date.