You can file a new application, a continuation application, a continuation-in-part (CIP) application, or a divisional patent application to document an improvement to an invention disclosed in a previously filed application. While CIP applications are usually available in the United States, divisional applications (available in Europe and China) and patent of addition applications (available in India, Australia, and New Zealand) are similar. This blog post discusses the benefits and drawbacks of the CIP application for the United States.
A CIP application is filed after the original (parent) application to capture new innovations made in the context of the parent application. The priority date of the CIP will be the same as that of the parent application. Any claim in the CIP that reveals new subject matter, on the other hand, will have a new priority date. Filing a CIP and trying to claim alternative embodiments of the innovation helps you protect it better, which benefits your overall IP strategy.
What Exactly are Continuation-In-Part (CIP) Patent Applications?
When an inventor or applicant wishes to add new material to a pending patent application, a continuation-in-part (CIP) application is filed. A CIP application allows the inventor to retain priority over the original application while also incorporating new material.
A CIP application is a type of patent application that is submitted while an earlier patent application is still being processed. This type of application is used when an inventor wishes to supplement an earlier patent application with new information. Additional inventions or improvements to the original invention may be included in the new material.
The benefit of filing a CIP application is that it allows an inventor to continue pursuing patent protection for their invention while also incorporating newly developed material. However, there are some constraints to submitting a CIP application. The new material, for example, must be associated with the initial application and cannot be completely independent.
It should be noted that a CIP application is considered to be an independent patent application with its own examination process. This means that the new material will be evaluated independently of the original application, and the CIP application could be granted as a separate patent.
Overall, CIP applications can be a helpful tool for inventors who wish to add new information to a pending patent application while still seeking patent protection for their invention. However, it is critical to collaborate with a patent attorney or agent to make sure that the CIP application is filed correctly and on time.
When is the Perfect Time to Submit a CIP Application?
A CIP application must be filed prior to the patenting, abandonment, or termination of proceedings for the parent application. Before publicly disclosing the parent application, it is best to file a CIP application.
What are the Benefits of Filing a CIP Application?
1. Lower Patent Prosecution Costs
By combining old and new disclosures in one patent application, you can reduce filing fees by filing a CIP application. As a result, you can forgo filing parallel applications (completely new patent applications). And, while the original application is being prosecuted, continue to improve it or add new embodiments to it.
2. Reduced Patent Management Costs
Because you are not filing separate patent applications for each new improvement in the invention but instead compressing your portfolio into one series of patent applications, the number of patents for a specific technology is reduced. Because there are fewer patents to manage, future patent maintenance fees will be lower.
3. Addition of New Subject Matter
A CIP allows you to supplement the patent with new subject matter. This is done to back up claimed features or to improve on the original subject matter. You can alter the current description or add details that explain the new subject matter to support the claims.
The Drawbacks of a CIP Application
1. Patent Term Reduction
A CIP patent application asserts priority over the parent application. As a result, even if the CIP application was filed five years after the parent application, it will still have the same expiration date.
2. The Parent Application May be Used as Prior Art
Nothing prevents the parent application’s disclosures from being used as prior art for new claims in the CIP application. As long as there is a one-year gap between the parent and CIP applications.
3. Prosecution History
The prosecution history disclaimers of the parent application may apply to a CIP application. As a result, the scope of patent protection in the CIP application may be limited.
Conclusion
Finally, continuation-in-part (CIP) patent applications are a type of patent application that allows an inventor to add fresh material to a pending patent application while retaining priority for the original application. CIP applications can be a useful tool for inventors. Especially for those who want to keep pursuing patent protection for their innovations while incorporating new material. However, it is critical to work with a legal advisor to ensure that the CIP application is submitted on time. Inventors can increase their likelihood of getting strong patent protection for their inventions by doing so.
