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Continuing patent application
Continuing patent application
Continuing patent application
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Under United States patent law, a continuing patent application is a patent application that follows, and claims priority to, an earlier-filed patent application. A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part. Although continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent applications are also available in other countries, as such availability is required under Article 4G of the Paris Convention.

Early history

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From 1838 to 1861, inventors could file patent applications on improvements to their inventions. These were published as "additional improvement patents" and were given numbers preceded by "A.I.". About 300 of these patents were issued.[1]

Current law

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Under the law in the U.S., inventors may file several different types of patent applications to cover new improvements to their inventions or to cover different aspects of their inventions. These types of patent applications include "continuation", "divisional", "continuation in part", and "reissue".

Continuation

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A "continuation application" is a patent application filed by an applicant who wants to pursue additional claims to an invention disclosed in an earlier application of the applicant (the "parent" application) that has not yet been issued or abandoned. The continuation uses the same specification as the pending parent application, claims the priority based on the filing date of the parent, and must name at least one of the inventors named in the parent application. This type of application is useful when a patent examiner allowed some, but rejected other claims in an application, or where an applicant may not have exhausted all useful ways of claiming different embodiments of the invention.[2]

During the prosecution of a continuation application, the applicant may not add additional disclosure to the specification. If the inventor needs to supplement the disclosure of the earlier parent application, he has to file a continuation-in-part application.[3]

Request for continued examination (RCE)

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In the typical case, a patent examiner will examine patent claims and amendments in an original patent application for two rounds of "office actions" before ending examination. However, often two office actions are not enough to resolve all of the issues in the patent prosecution.

A request for continued examination (RCE) is a request by an applicant for continued prosecution after the patent office has issued a "final" rejection or after prosecution "on the merits" has been closed (for example by a Notice of Allowance or by a Final Rejection). An RCE is not considered a continuing patent application - rather, prosecution of the pending application is reopened.[4] The inventor pays an additional filing fee and continues to argue his case with the patent examiner. No RCE was allowed prior to June 8, 1995.[5]

QPIDS program

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Because of a large number of last-minute Requests for Continuing Examination (RCEs) due to new prior art being found, and the additional burden these RCEs impose on examination, the USPTO launched in May 2012 the Quick Path Information Disclosure Statement (QPIDS) Pilot Program.[6] The program can be used to submit an Information Disclosure Statement (IDS) during the time interval after payment of the issue fee but prior to patent grant. Only if the examiner feels that the references on the IDS are material, a Request for Continuous Examination is executed and examination is reopened. Prior to QPIDS program, launching a full-scale RCE was the only option to introduce new prior art during that time interval. Filing a QPIDS request requires a payment of full RCE and IDS fees, which are refunded, if no RCE is opened. However, QPIDS petition fee is not returned.[7]

Ca. 2018 the QPIDS program became permanent,[8] even though USPTO's own study in 2014 showed very low applicants' participation rate.[9]

Divisional

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See also: Divisional patent application

A divisional application also claims priority based on the filing date of the parent application, but differs from a continuation application in that a divisional application claims a distinct or independent invention "carved out" of the parent application. A divisional application must share at least one of the inventors named in the parent application. A divisional application is often filed after the examiner issued a "restriction requirement", because a patent can only claim a single invention (cf. unity of invention). The USPTO practice of splitting patent applications into numerous divisionals has been criticized as an abuse intended to increase the USPTO revenues at the expense of patent holders.[10]

Continuation-in-part (CIP)

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A "continuation-in-part" application ("CIP" or "CIP application") is one in which the applicant adds subject matter not disclosed in the parent patent application, but repeats a substantial portion of the parent's specification, and shares at least one inventor with the parent application. The CIP application is a convenient way to claim enhancements developed after the parent application was filed. It is the successor to the earlier "additional improvement" patents mentioned above. For a continuation-in-part application, claims to subject matter that was also disclosed in the parent are entitled to the parent's priority date, while claims to the additional subject matter are only entitled to the filing date of the CIP application.[3]

A patent of addition is available in Israel, which is generally similar to a CIP in the U.S.[citation needed]

Reissue

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If an issued patent is found to be defective, the patent owner can surrender the patent and file a reissue application to correct the defect. One such defect occurs when the issued patent claims either more or less than the coverage to which the patentee is entitled, the latter situation resulting in a "broadening reissue". Thus, an inventor can submit a reissue application with broader claims and attempt to get the full coverage to which he or she is entitled. The inventor is not, however, allowed to add new features to the disclosure. A broadening reissue application must be filed within two years from the grant date of the originally issued patent.[11] A reissue patent has the kind code E.[12]

Controversy around attempted changes by USPTO to continuation practice

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In 2007, USPTO announced new regulations under 37 CFR (published August 21, 2007) that would significantly alter procedures regarding continuation applications before the USPTO. Previously, USPTO rules allowed an inventor to file as many continuations as necessary to get desired breadth of claims. The procedure was criticized for creating uncertainty as to what is covered or could be covered by a given patent application. An inventor, for example, could have sought to get claims with limited scope approved early, and then continue to file continuations over many years seeking broader coverage. For example, inventor Jerome H. Lemelson filed a series of continuations over thirty years to get a very broad patent on bar code readers. This patent was issued in 1984, long after bar code readers had become an integral part of the U.S. economy. Lemelson was then able to collect over a billion dollars in license fees from large companies using bar code readers. (Note however that the Lemelson optical recognition patents followed a since-replaced rule under which patents would expire 17 years after the patent was granted, regardless of when the patent application was filed. For patents filed on or after June 8, 1995, under the TRIPS agreement, continuation patents expire 20 years from the date of filing of the parent patent application, regardless of when the patent is granted. Thus, Lemelson's "submarine patents" strategy of taking steps that would delay the patent grant date will no longer extend the patent expiration date.)

To minimize this alleged abuse of the patent system, the USPTO proposed several changes to the rules as to the number of continuations an applicant can file. The proposed changes were announced on January 3, 2006, and were published in final form on August 21, 2007, after various modifications were made pursuant to input received as public notice and comment (during which the public was invited to comment on the proposed rule changes[13]). Many of the provisions in the new rules went into effect November 1, 2007; however, certain additional exemptions apply for continuation applications filed before the publication date of August 21, 2007, even after November 1, 2007.

The proposed rules would have limited an inventor to filing two continuation applications for each type of invention disclosed in an original patent application, unless the applicant can show "good cause" for filing additional continuations. Furthermore, applicants could file only one RCE for each "family" of applications (that is, the group of applications including original applications and each of the continuation applications claiming the benefit of priority of the original application) unless the USPTO granted the applicant permission upon showing "good cause".[14]

The proposed changes were generally opposed by patent agents and attorneys,[15] manufacturing companies,[16] biotechnology companies,[17] and independent inventors.[18] There was concern that the rule changes failed to consider the difficulties commonly encountered in getting a patent, and that the changes would result in inventors failing to get the full range of patent protection to which they are entitled. The groups also maintained that the rule changes were not consistent with the current regulations on continuations.

The rule changes were generally favored by software companies,[19] electronics companies[20] and US government agencies[21] for the reasons given above. Those that favored the rule changes felt that said changes were consistent with the laws governing continuation practice.

On August 22, 2007, inventor Dr. Triantafyllos Tafas sued the USPTO in the United States District Court of the Eastern District of Virginia on the ground that the rule changes were in violation of the U.S. patent law and therefore are invalid.[22][unreliable source?] On October 9, 2007, pharmaceutical company GlaxoSmithKline filed a similar suit seeking a preliminary injunction to prevent the enforcement of the new rules.[23][unreliable source?] The court consolidated the two cases and scheduled a hearing on GlaxoSmithKline's motion for October 31, one day before the rules were to go into effect.[24][unreliable source?] On October 31, the court granted a preliminary injunction which prohibits the USPTO from enforcing the patent rules on continuations and claims which were to come into effect the following day.[25] On April 1, 2008, the injunction was made permanent,[26] but in March 2009, it was overturned by United States Court of Appeals for the Federal Circuit.[27]

In October 2009, USPTO withdrew proposed changes[clarification needed] to the continuation rules.[28]

See also

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References

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Revisions and contributorsEdit on WikipediaRead on Wikipedia

Continuing patent application

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from Grokipedia
A continuing patent application is a mechanism under U.S. patent law allowing an applicant to file a subsequent application that claims the benefit of the filing date of an earlier "parent" application, provided the later filing references the prior one and is copending or continuous in prosecution, as governed by 35 U.S.C. § 120. There are three primary types: a continuation application, which pursues additional claims fully supported by the parent's disclosure without adding new matter; a divisional application, filed to separate distinct inventions claimed in the parent to comply with USPTO restriction requirements under 35 U.S.C. § 121; and a continuation-in-part (CIP) application, which incorporates new material beyond the parent's disclosure while claiming priority only for the overlapping subject matter. These applications enable applicants to refine claim scope in response to examiner rejections, pursue broader or narrower protection, or adapt to evolving prior art without losing the original priority date. The primary purpose of continuing applications is to provide strategic flexibility during , allowing inventors and assignees to build robust patent families from a single foundational disclosure, which can extend across variations of an and facilitate responses to market or competitive developments. Benefits include by avoiding entirely new filings, the ability to delay claim finalization until after parent patent issuance for informed claim drafting, and preservation of patent term adjustments tied to the parent's examination delays. In practice, they have been widely used to maximize value, particularly in and pharmaceutical sectors, where sequential continuations can yield multiple patents covering incremental improvements or alternative embodiments. While continuing applications enhance innovation incentives by enabling comprehensive coverage of disclosed inventions, they have drawn criticism for facilitating ""—dense clusters of overlapping that may deter competition, especially in biologics and small-molecule drugs by extending effective monopolies through secondary . Proponents argue this practice legitimately rewards detailed disclosures, but detractors, including regulatory bodies like the FTC, contend it contributes to delayed generic entry and higher costs, prompting proposed USPTO rules to limit serial continuations in certain fields. Recent USPTO analyses, however, indicate that claims of widespread abuse via continuations may rely on inflated or unreliable counts, underscoring debates over in critiques.

Definition and Purpose

A continuing patent application in encompasses continuation, divisional, and continuation-in-part applications filed under the conditions outlined in 35 U.S.C. § 120, which grants the benefit of an earlier filing date for inventions adequately disclosed in a prior copending application by the same inventor or assignee. To qualify, the continuing application must reference the prior application specifically, be filed before the patenting, abandonment, or termination of proceedings on the parent application, and contain claims supported by the parent's disclosure under 35 U.S.C. § 112(a). This statutory framework, enacted as part of the Patent Act of 1952 and amended over time, ensures continuity in prosecution without resetting the priority date for purposes. The core function of a continuing application is to enable applicants to refine or expand claim strategies during patent prosecution by leveraging the parent's disclosure and effective filing date, thereby addressing examiner rejections, pursuing narrower or broader alternatives, or isolating independent inventions without forfeiting novelty against intervening art. Unlike standalone applications, continuations and divisionals prohibit new matter, restricting them to the original specification and drawings, which preserves the integrity of the priority claim while allowing iterative examination. This mechanism facilitates efficient portfolio building, as the continuing application's patent term runs from its own filing date (post-1995, typically 20 years from earliest non-provisional filing under 35 U.S.C. § 154), but inherits the parent's earlier date for assessing patentability. In practice, the legal definition emphasizes copendency and support requirements to prevent undue extension of monopoly rights, with the United States and Office (USPTO) enforcing these via examination guidelines that mandate a clear priority chain. The core function thus supports causal progression in innovation protection: applicants can respond to evolving or prosecution insights from the parent without refiling from scratch, reducing costs and risks associated with abandonment, though it demands precise compliance to avoid invalidation challenges.

Strategic Role in Patent Prosecution

Continuing patent applications enable applicants to extend prosecution of an invention disclosed in a parent application, allowing iterative refinement of claims in response to examiner rejections or evolving strategic needs without introducing new matter. By claiming priority to the parent's filing date under 35 U.S.C. § 120, continuations preserve the effective filing date for novelty and non-obviousness assessments while permitting the pursuit of alternative claim scopes that may have been narrowed or rejected in the parent. This mechanism supports a "file now, claim later" approach, where applicants file broad disclosures early and use continuations to craft narrower, enforceable claims as prior art landscapes, market conditions, or competitor activities become clearer during prosecution. A primary strategic advantage lies in responding to office actions; for instance, if an examiner issues a restriction requirement under 35 U.S.C. § 121, applicants can elect claims for prosecution in the parent while filing a divisional for non-elected inventions, thereby avoiding abandonment and securing parallel examinations. Continuations also facilitate claim amendment strategies, such as broadening or narrowing dependent claims to overcome obviousness rejections under 35 U.S.C. § 103, often by restarting the examination clock upon abandonment of the parent, which can delay issuance by up to 3-4 years depending on USPTO backlog. This delay tactic allows time to monitor third-party patents or litigation, enabling tailored claims that better align with infringement scenarios, as evidenced by corporate practices where continuations yield claims more closely matching specific products. In portfolio management, continuations build layered protection by generating families of patents with overlapping but distinct claims, deterring competitors through over the full scope of coverage and enhancing licensing or value. Empirical analysis of USPTO data shows continuing applications are disproportionately filed for high-value technologies in uncertain fields, where they command higher private valuations than standalone patents due to this flexibility. However, repeated filings must navigate double patenting doctrines under 35 U.S.C. § 101 et seq., often requiring terminal disclaimers to disclaim term beyond the parent, which ties enforceability to the earliest expiration but preserves strategic breadth during prosecution. Such practices, while rooted in statutory continuity provisions, reflect a calculated use to maximize claim allowability rates, with studies indicating continuations succeed in obtaining allowance where parents face prolonged rejections.

Economic Incentives for Use

Continuing patent applications offer economic advantages primarily through reduced filing and prosecution costs relative to entirely new applications. Since they leverage the existing specification and drawings from a parent application while claiming the same priority date, the preparation expenses are incremental, often involving only claim amendments rather than full redrafting or novelty assessments. This cost efficiency is particularly beneficial for resource-constrained entities like startups, which can file initial broad applications to secure early priority and defer narrower or dependent claims until funding or market clarity emerges, thereby aligning expenditures with business development stages. Strategically, continuations enable applicants to iteratively refine claim scope in response to examiner rejections, emerging , competitor activities, or legal shifts, thereby increasing the likelihood of allowance and broadening enforceable protection without forfeiting the original filing date. This flexibility allows firms to lock in core claims via the parent patent for immediate market defense while pursuing variations in continuations to address specific commercial needs, such as blocking rival products or adapting to over the patent term. By maintaining pendency and avoiding abandonment of viable inventions, applicants against initial prosecution risks, potentially yielding a of interlocking patents that enhance portfolio depth and licensing potential. Empirical evidence underscores these incentives, with stemming from continuations demonstrating higher private value: they exhibit elevated renewal rates (e.g., 2.65% higher for continuations), litigation involvement (1.26% higher), and transfer probabilities (6.10% higher reassignment) compared to standalone . Filing rates correlate positively with underlying quality, as measured by international family size, and surge dramatically—up to 613%—following a notice of allowance on the , reflecting timed strategies to maximize returns after securing initial gains. Such practices effectively mitigate disclosure uncertainties, boosting the appropriability of inventive returns by allowing claim evolution aligned with post-filing insights.

Historical Development

Origins in 19th-Century US Patent Practice

The introduction of substantive examination of patent applications under the Patent Act of 1836 marked a pivotal shift in patent practice, creating incentives for applicants to refine claims in response to examiner rejections rather than accept initial determinations without review. Prior to 1836, the system under the Patent Act of 1793 operated largely as a registration regime without mandatory examination, limiting the procedural need for iterative filings. The 1836 Act established the with dedicated examiners, required detailed specifications and claims, and permitted applicants to amend or abandon applications during prosecution, fostering the emergent practice of refiling substantially identical applications to pursue alternative claiming strategies or restart examination. This practice evolved into what became known as continuation applications, allowing inventors to file a new application based on a prior pending or abandoned one to claim the same with modified claims, thereby preserving the original filing date for priority purposes. From 1838 to 1861, a related mechanism permitted "additional patents," where inventors could file follow-on applications for refinements to patented inventions, published separately but linked to the original. By the mid-19th century, administrative rules tacitly supported such continuations as a means to avoid final rejection, particularly in interference proceedings where conflicting claims arose between applicants. Judicial endorsement of continuation practice solidified in Godfrey v. Eames, 68 U.S. (1 Wall.) 317 (1864), where the upheld a patent issued on a filed shortly after withdrawal of the parent application to sidestep an interference. The Court reasoned that the effectively continued the original application's prosecution, entitling it to the parent's priority date as if no interruption occurred, provided the claims covered the same invention disclosed therein. This decision affirmed as a legitimate tool under existing statutes, rooted in the 1836 Act's flexibility for amendments and abandonments, though without explicit legislative codification until later acts. The ruling emphasized that such filings did not constitute new inventions but extensions of the original disclosure, aligning with the constitutional mandate to promote useful arts through secure property rights in inventions.

20th-Century Evolution and Key Statutes

The practice of filing continuing applications in the United States evolved significantly in the early 20th century through administrative rules of the United States Patent Office (USPTO) and judicial interpretations that built upon 19th-century precedents, such as Godfrey v. Eames (1864), which permitted subsequent applications claiming the same invention to retain the original filing date even if filed on the same day as the parent's issuance or abandonment. This allowed inventors to refine claims in response to examiner rejections, pursue narrower or broader scopes without losing priority, and maintain prosecution flexibility amid growing technological complexity, though it occasionally prompted USPTO restrictions on excessive filings to prevent administrative burden and potential overreach in claim proliferation. By the mid-century, continuation practice had become a standard strategy, enabling applicants to generate families of patents from a single disclosure while adhering to the non-statutory principle that the invention must remain identical to the parent. The pivotal statutory framework emerged with the Patent Act of 1952 (Pub. L. 82-593, enacted July 19, 1952), which codified continuation procedures for the first time, primarily through 35 U.S.C. § 120. This provision granted a subsequent application the effective filing date of a prior U.S. application by the same inventor (or joint inventors) for inventions disclosed as required by 35 U.S.C. § 112, conditioned on filing before the parent's patenting, abandonment, or termination of proceedings, and specific reference to the prior application. Section 120 explicitly supported pure continuations (claiming only parent matter), while § 121 addressed divisionals to resolve restriction requirements without double patenting risks, and continuation-in-part (CIP) applications were implicitly enabled under the same benefit rules for overlapping subject matter. The Act's legislative history, including reports, confirmed this as a formalization of longstanding common-law and administrative practices rather than a novel creation, aiming to clarify priority claiming amid rising application volumes—over 50,000 annually by the early 1950s. Subsequent 20th-century developments refined incentives and limitations. The USPTO's Manual of Patent Examining Procedure (MPEP), evolving post-1952, detailed procedural requirements like copendency and amendment restrictions to prevent new matter introduction in non-CIP continuations. Usage surged in the latter half of the century with advancements in fields like and pharmaceuticals, where iterative claiming proved valuable, though concerns over "" prompted scrutiny. The (Pub. L. 103-465, enacted December 8, 1994, effective June 8, 1995) shifted patent terms from 17 years post-issuance to 20 years from the earliest non-provisional filing date claimed under § 120, curtailing strategic term extensions via continuations since child applications no longer gained additional monopoly duration beyond the parent's horizon. This change, implementing GATT/TRIPS obligations, aligned U.S. with international norms but diminished one economic driver for prolonged chains, effective for applications filed on or after the implementation date. The American Inventors Protection Act of 1999 (Pub. L. 106-113) further adjusted terms with provisional rights and publication provisions, indirectly influencing continuation strategies by enhancing pre-grant deterrence against infringement.

Judicial Interpretations Shaping Modern Practice

The practice of filing continuing applications traces its judicial roots to 19th-century interpretations allowing applicants to maintain priority by submitting follow-on filings before final disposition of a application. As early as 1864, the U.S. affirmed that a filed on the same day as the issuance or withdrawal of its could claim the parent's effective filing date, establishing a foundational for seamless prosecution chains that preserved novelty against intervening disclosures. This early recognition, rooted in statutes like the Patent Act of 1836, treated continuations as extensions of the original disclosure rather than new inventions, enabling applicants to refine claims without losing priority. In the 20th century, the Supreme Court's decision in Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926), significantly influenced strategy by holding that an abandoned disclosing but not claiming an invention constitutes under 35 U.S.C. § 102 against subsequent patents, even if the disclosure remained secret. This ruling underscored the risks of incomplete claiming in parent applications, incentivizing filers to use continuations to exhaustively cover disclosed subject matter before abandonment, thereby mitigating "secret prior art" vulnerabilities and shaping the defensive use of continuation chains in modern prosecution. Following the codification of continuation rights in 35 U.S.C. § 120 under the 1952 Patent Act, the Court of Customs and Patent Appeals (CCPA) in Application of Henriksen, 399 F.2d 253 (C.C.P.A. 1968), interpreted the statute to permit indefinite chains of continuations, rejecting any implicit generational limit as long as each filing referenced the immediate prior application and complied with timing requirements. This expansive reading facilitated layered prosecution strategies, allowing applicants to iteratively narrow or broaden claims based on examiner feedback, examiner art, or evolving market needs, a practice that persists today but has drawn scrutiny for potential overreach. Modern boundaries emerged through Federal Circuit rulings addressing temporal and substantive constraints. In Immersion Corp. v. HTC Corp., 2016 WL 3450709 (Fed. Cir. June 17, 2016), the court upheld the USPTO's longstanding policy permitting "same-day" continuations filed concurrently with a parent's issuance, construing § 120's "before the patenting" to mean before the precise moment of grant, thereby validating thousands of existing patents and reinforcing procedural flexibility in high-stakes filings. Complementing this, the judicially developed obviousness-type double patenting doctrine, as applied in In re Braat, 937 F.2d 797 (Fed. Cir. 1986), requires terminal disclaimers in continuations claiming obvious variants of parent claims to prevent unjust term extensions, balancing applicant rights against public interest in patent term certainty. These interpretations collectively define contemporary limits, ensuring continuations serve legitimate refinement while curbing abuse through strict priority linkage and disclaiming obligations.

Types of Continuing Applications

Continuation Applications

A continuation application is a type of continuing patent application filed under 35 U.S.C. § 120 that claims the benefit of the filing date of a prior-filed copending U.S. nonprovisional application, disclosing the same invention without introducing new matter. It must include a specific reference in an amendment or the application as filed to the prior application, identifying it by application number and filing date, to invoke the earlier priority date for common subject matter. The continuation copies the specification, drawings, and claims from the parent application, though new or amended claims may be presented to pursue alternative claiming strategies supported by the original disclosure. To qualify, the must be filed before the application's issuance as a , abandonment, or other termination of proceedings, ensuring copendency at filing. Inventorship in the continuation must comprise at least one inventor named in the prior application, though it may add inventors if they contributed to the claimed within the original disclosure's scope. No new matter—such as additional description, examples, or data not present in the parent—may be added, preserving the disclosure's and preventing extension of the effective filing date for novel elements. Upon filing under 35 U.S.C. § 111(a), it receives a new application number, , and filing date, but benefits from the parent's priority for examination purposes. Procedurally, applicants submit the with a cover sheet or application data sheet claiming priority under § 120, paying applicable fees, including the continuing application surcharge if claiming more than one prior application. The U.S. and (USPTO) examines it as a new application, applying the same novelty and nonobviousness standards relative to predating the 's effective date. enable strategic prosecution, such as narrowing claims in response to prior art rejections in the parent or filing additional claims after allowance to secure broader or dependent protection from the same disclosure. Unlike divisional applications, which address distinct inventions following a USPTO restriction requirement under 35 U.S.C. § 121, continuations pursue variations of the elected invention's claims without requiring prior restriction. They differ from continuation-in-part (CIP) applications, which permit addition of new matter under 35 U.S.C. § 120 while claiming the parent's date only for common subject matter, potentially splitting priority dates. This structure supports multiple patents from a single disclosure, subject to obviousness-type double patenting restrictions, often mitigated by terminal disclaimers.

Divisional Applications

A divisional application is a continuing patent application filed under 35 U.S.C. § 121 to claim an that is independent and distinct from the invention elected in a prior-filed parent application, typically in response to a USPTO restriction requirement. This provision authorizes the USPTO Director to restrict an application claiming multiple independent and distinct s to one invention for examination, allowing the applicant to pursue the remaining invention(s) via a divisional that retains the parent's effective filing date for priority purposes, provided the divisional is filed before the parent issues or is abandoned. Divisional applications must be based solely on the disclosure in the parent application, without introducing new matter, and require a specific reference in the divisional to the parent application number to claim the benefit under 37 C.F.R. § 1.78. Inventorship in the divisional must include at least one inventor named in the parent, and the claims must be supported by the parent's specification as originally filed. Procedurally, the applicant files a copy of the parent's specification (or an incorporation by reference if allowed), drawings, and claims directed to the non-elected invention, paying applicable fees; examination proceeds independently but benefits from the parent's earlier priority date against third-party intervening rights. Strategically, divisionals enable applicants to secure for multiple inventions disclosed in a single filing, which is particularly useful for complex technologies where initial claims cover broad or related subject matter that the USPTO deems lacking . This approach defers examination and prosecution costs for secondary inventions until their commercial viability is clearer, while preserving priority; however, voluntary divisionals (filed absent a restriction requirement) may not qualify for the § 121 "safe harbor" against obviousness-type double patenting rejections when the parent issues, limiting to only those directly responsive to a USPTO restriction. In practice, applicants often pursue divisionals to broaden claim coverage or address examiner rejections on non-elected claims, but must navigate terminal disclaimers if double patenting issues arise outside the safe harbor.

Continuation-in-Part Applications

A continuation-in-part (CIP) application is a continuing patent application filed under 35 U.S.C. § 120 that incorporates a substantial portion of the disclosure from a prior copending nonprovisional or international application designating the United States, while also introducing new subject matter not supported by the prior application's disclosure. The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application to satisfy the copendency requirement. To claim priority benefit under 35 U.S.C. § 120, the CIP application must include a specific reference to the prior application by and filing date, typically in the first sentence of the specification or in an application data sheet under 37 C.F.R. § 1.76. At least one inventor must be common between the prior application and the CIP, though new inventors may be added for the new matter. CIPs are filed under 37 C.F.R. § 1.53(b) and cannot introduce new matter in a way that violates the written description or enablement requirements of 35 U.S.C. § 112 for the claims directed to that matter. Unlike a standard continuation application, which must fully rely on the prior application's disclosure without adding new matter, a CIP permits the inclusion of additional technical details, experimental data, or improvements developed after the prior filing, enabling applicants to expand protection without forfeiting priority for the overlapping subject matter. For claims fully supported by the prior disclosure, the effective filing date is that of the earlier application, potentially shielding against intervening ; however, claims dependent on the new matter receive only the CIP's filing date, exposing them to prior art published between the prior and CIP filing dates. The patent term for a CIP is generally 20 years from the filing date of the earliest U.S. nonprovisional application in the chain under 35 U.S.C. § 154(a)(2), but new matter claims accrue term from the CIP filing date for purposes of calculating adjustments under 35 U.S.C. §§ 154(b) and 156. CIPs are strategically used when subsequent developments necessitate disclosure additions, such as foreign filing requirements or post-filing inventions, but they risk complicating prosecution due to split priority dates and potential double patenting issues with the parent application, often requiring terminal disclaimers.

Requests for Continued Examination

A Request for Continued Examination (RCE) is a procedural option under 37 CFR 1.114 enabling applicants to reopen prosecution in a utility or plant patent application after the United States Patent and Trademark Office (USPTO) has effectively closed examination, such as via a final rejection under 37 CFR 1.113 or a notice of allowance under 37 CFR 1.311. Enacted through the American Inventors Protection Act of 1999 (Pub. L. 106-113) and applicable to applications filed on or after June 8, 1995, this mechanism replaced the discontinued continued prosecution application (CPA) practice for utility and plant patents, which ended on July 14, 2003. RCEs permit the submission of additional claim amendments, arguments, evidence, or information disclosure statements without requiring a new application filing, thereby maintaining the original application's serial number, filing date, and priority claims under 35 U.S.C. 119 or 120. Filing an RCE requires submission of a request—typically using USPTO form PTO/SB/30—a responsive submission compliant with 37 CFR 1.111 (if addressing an outstanding action), and the applicable fee under 37 CFR 1.17(e) for the initial RCE or 1.17(f) for subsequent ones, all prior to the earliest of issue fee payment (unless a under 37 CFR 1.313 is granted), application abandonment, or a decision on or civil action. Upon proper filing, the USPTO withdraws the finality of the prior action, enters the submission, and resumes examination as if prosecution had not closed; post- RCEs effectively withdraw the and reinstate handling. Eligibility excludes provisional applications, patents, international applications, and utility or plant applications filed before June 8, 1995, though RCEs are available for applications of utility or plant patents subject to specific timing under 37 CFR 1.114 and Manual of Patent Examining Procedure (MPEP) § 1452. In contrast to , divisional, or continuation-in-part applications—which initiate a distinct filing under 35 U.S.C. 120, 121, or 365(c) with potential for a new and, in the case of continuations-in-part, limited new matter—RCEs operate within the existing application framework, prohibiting new matter additions and preserving the original disclosure's scope. This approach facilitates targeted responses to examiner objections post-final action, often serving as an alternative to appeals under 37 CFR 41 or abandonments followed by continuations, but it extends pendency and accumulates fees without resetting examination timelines or establishing separate priority chains. RCE filings have increased over time, reflecting their utility in refining claims amid ongoing considerations, though USPTO data indicate they contribute to backlog in high-volume technologies.

Filing Procedures and Priority Claiming

Continuing applications, including continuations, divisionals, and continuations-in-part (CIPs), are filed with the United States Patent and Trademark Office (USPTO) as non-provisional utility patent applications under 35 U.S.C. § 111(a), requiring submission of a specification, claims, drawings (if necessary), an oath or declaration, and the appropriate filing fees. The application must explicitly claim the benefit of the prior-filed parent application by including a specific reference, typically in the first sentence of the specification or via an Application Data Sheet (ADS) under 37 C.F.R. § 1.76, stating the relationship (e.g., "This application is a continuation of U.S. Application No. [serial number], filed [date]"). Failure to include this reference precludes entitlement to the earlier filing date, as mandated by 35 U.S.C. § 120. Filing must occur while the parent application remains pending—before its issuance as a patent, abandonment, or termination of proceedings—to satisfy the co-pendency requirement. For continuations and divisionals, the disclosure must be identical to or supported by the parent's specification without new matter, ensuring the continuation does not introduce unsupported subject matter that would trigger a new filing date for those portions. CIPs permit addition of new matter, but only the pre-existing disclosure from the parent qualifies for the earlier priority date under 35 U.S.C. § 120, while novel material receives the CIP's filing date for patentability purposes. Inventorship must overlap with the parent, requiring at least one common inventor named in both, though the continuation may list a subset or superset if supported by the disclosure. Applications are submitted electronically via the USPTO's Patent Center system, with basic filing fees set at $320 for small entities and $800 for large entities as of fiscal year 2025 adjustments, plus any surcharges for excess claims or pages. Priority claiming under 35 U.S.C. § 120 entitles the continuing application to the 's effective filing date for common subject matter, provided the reference claim is made, co-pendency is maintained, and the disclosure supports the claims without violating written description or enablement under 35 U.S.C. § 112. This benefit extends through a continuous chain of priority applications, allowing inheritance of the earliest relevant date, but each link must independently satisfy § 120 conditions. Divisionals filed under 35 U.S.C. § 121 pursuant to a restriction receive similar priority but are exempt from certain double patenting rejections relative to the . Applicants must ensure the priority claim is presented at filing or within the later of four months from the actual filing date or sixteen months from the 's filing date for foreign priorities if chained, though U.S.-to-U.S. claims under § 120 have no such outer limit beyond co-pendency. The USPTO examines priority claims during initial review, potentially issuing a of missing parts if the reference is absent or defective.

Examination Standards and Amendments

Continuing applications undergo examination by the United States Patent and Trademark Office (USPTO) under the same statutory criteria for patentability as original applications, including utility under 35 U.S.C. § 101, novelty and non-obviousness under §§ 102 and 103, and specification requirements under § 112, with the effective filing date for prior art purposes tracing back to the parent application via the benefit claim under § 120. Examiners conduct a full search of the prior art as of the parent's priority date for continuations and divisionals, but claims must be fully supported by the parent's disclosure without introducing new matter, which is prohibited under 35 U.S.C. § 132(a) and strictly enforced to prevent broadening the original invention's scope. In continuation-in-part (CIP) applications, new matter is permitted in the specification, but priority under § 120 applies only to subject matter common to the parent, requiring examiners to apportion support accordingly during enablement and written description analyses. Amendments in continuing applications follow the procedures outlined in 37 CFR § 1.121, requiring submission in a clean version alongside marked-up changes, and must be fully responsive to any Office action while avoiding new matter in continuations and divisionals. Preliminary amendments may accompany the filing of a continuing application to refine claims based on the parent's prosecution history or intervening art, but examiners review them for compliance with support requirements and may require a substitute specification if substantive changes affect the original disclosure. Applicants cannot amend the specification to add matter not present in the parent for continuations, though claim amendments narrowing scope to overcome rejections are common, provided they remain enabled and described. Following a final Office action rejecting claims, applicants in continuing applications may file a request for continued examination (RCE) under 37 CFR § 1.114, which reopens prosecution with an additional non-final action, accompanied by fees and an or information disclosure statement to address rejections. A 2020 revision to MPEP § 706.07(h) clarified that after-final amendments in RCEs or continuations are not automatically entered if they merely narrow claims without traversing rejections, unless the examiner's advisory action indicates enterability or the changes overcome all outstanding issues, aiming to prevent serial narrowing without substantive advancement. This policy applies retroactively to pending applications, emphasizing examiner discretion to ensure amendments contribute to patentability rather than indefinite deferral of decisions.

Double Patenting and Terminal Disclaimers

The doctrine of double patenting prohibits the issuance of multiple patents claiming overlapping inventions from the same applicant or assignee, primarily to prevent undue extension of the patent term beyond that granted to the reference patent or application. In the context of continuing applications, which derive priority from a application under 35 U.S.C. § 120 or § 121, double patenting rejections frequently arise because these filings allow applicants to pursue additional or refined claims not examined in the parent, potentially resulting in claims that are not patentably distinct from those in the earlier . Statutory double patenting, rooted in the singular "a " language of 35 U.S.C. § 101, applies narrowly to claims defining identical inventions, but it is rarely invoked in continuing application scenarios due to claim differentiation practices. Non-statutory or obvious-type double patenting (ODP), however, is the predominant basis for rejections, assessing whether claims in the continuing application would have been obvious over the parent's claims, irrespective of considerations, to curb term extension via serial filings. ODP rejections in continuing applications, such as or divisionals, stem from the policy that applicants should present all patentably distinct claims in a single application to avoid piecemeal exclusivity; filing a implicitly acknowledges that its claims may not be patentably distinct from the parent's allowed claims, necessitating scrutiny under the two-way test in some structures where the continuing application's earlier effective filing date could otherwise invalidate the parent. For example, in divisional applications filed under 35 U.S.C. § 121 to comply with unity of requirements, the harbor provision immunizes against double patenting rejections based solely on the parent's claims, but this protection does not extend to rejections using a application's claims against a later divisional. Continuation-in-part applications face similar ODP risks for new matter claims overlapping parent claims, though priority limitations under 35 U.S.C. § 120(b) mitigate some issues. Federal Circuit precedents, such as those limiting ODP to prevent invalidation of a first-filed, first-issued by a later-expiring member, reinforce that the targets unjustified extensions rather than punishing claim variations within . Terminal disclaimers serve as the primary mechanism to overcome non-statutory double patenting rejections in continuing applications, requiring the applicant to disclaim the portion of the term extending beyond the of the conflicting patent, including any patent term adjustment (PTA) under 35 U.S.C. § 154(b), thereby aligning expiration dates and eliminating term extension incentives. To be effective, a terminal filed under 37 C.F.R. § 1.321(c) must be signed by the applicant or owner, irrevocably bind successors and assignees, and include an agreement that the patent shall be unenforceable if the disclaimant fails to maintain the reference patent or if ceases—though as of December 2024, the U.S. and Trademark Office (USPTO) withdrew a proposed rule mandating this enforceability covenant for ODP-based disclaimers, preserving traditional practice focused on term alignment. The applies prospectively to any patent issuing from the application and does not retroactively affect issued patents, but provisional rejections may persist until a compliant is filed, ensuring ongoing family coordination. In practice, terminal disclaimers are routinely filed in over 90% of families to secure allowance, though they impose covenants that can complicate licensing or enforcement if control diverges.

Recent Developments and Policy Adjustments

USPTO Fee Reforms in Fiscal Year 2025

In fiscal year 2025, the Patent and Office (USPTO) introduced the Continuing Application Fee (CAF) as part of broader fee adjustments, effective January 19, 2025, to enhance cost recovery for examinations of long-pending continuing applications. The CAF applies to nonprovisional continuing applications—including continuations, divisionals, continuations-in-part (CIPs), and design continuations-in-part (CPAs)—filed more than six years after their earliest benefit date (EBD), defined as the earliest U.S. filing date claimed under 35 U.S.C. §§ 120, 121, 365(c), or 386(c), excluding foreign priority or dates. This surcharge does not apply to applications or those filed within six years of the EBD, which account for approximately 80% of continuing filings, thereby preserving lower barriers for timely continuations. The CAF is tiered based on the duration since the EBD, with fees scaled by entity status to reflect discounted rates for small (60% reduction) and micro (80% or 75% reduction, per specific provisions) entities.
Time After EBDUndiscounted FeeSmall Entity FeeMicro Entity Fee
>6 years to ≤9 years$2,700$1,080$540
>9 years$4,000$1,600$800
Payment of the CAF is required when presenting a benefit claim under 37 C.F.R. § 1.78(d), with non-payment potentially leading to abandonment of the application; exemptions may apply if the EBD anniversary falls on a non-business day in These reforms address the USPTO's aggregate examination estimated at $3.973 billion for FY 2025, including $2.835 billion for examining, amid a tripling of continuing application filings from FY 2010 to FY 2022, which often yield limited maintenance revenue due to term expiration before full recovery. By imposing surcharges on later-filed continuations, the USPTO aims to reduce subsidies for extended application families that extend pendency without proportional long-term contributions, while maintaining overall increases of approximately 7.5% across services to offset inflation and operational needs. The policy targets resilience in the USPTO's user--funded model against shifts in filing patterns, without altering core examination standards for qualifying continuations.

Discontinuation of Specialized Programs like QPIDS

The Patent and Trademark Office (USPTO) terminated the After Final Consideration Pilot Program 2.0 (AFCP 2.0) on December 14, 2024, following a brief extension from its initial planned expiration. This program had enabled applicants to submit a pre-appeal brief request for continued examination, including proposed claim amendments, after a final rejection, allowing examiners to consider them without the full procedural requirements and fees of a standard request for continued examination (RCE) in many cases. The USPTO cited high administrative costs—estimated at significant examiner time without corresponding fee recovery—as the primary reason for discontinuation, noting that the program's benefits did not justify the resource drain amid broader efforts to streamline operations and align with fiscal year 2025 fee reforms. Post-termination, applicants must now rely more heavily on RCE filings under 37 CFR 1.114 to pursue amendments after final action, potentially increasing costs and pendency in applications involving continuations or prolonged prosecution. In a parallel development, the USPTO discontinued the Accelerated Examination program for utility applications effective July 10, 2025. Launched to expedite examination through applicant-provided prior art searches, claim charts, and examination support documents, the program saw minimal uptake, with fewer than 100 petitions filed annually from fiscal years 2014 to 2024. Officials attributed the low utilization to the program's stringent upfront requirements, which deterred applicants despite promises of examination within 12 months of filing. This discontinuation shifts focus to the existing Track One Prioritized Examination, which offers faster processing without the Accelerated program's additional commitments, affecting strategies for initial filings that might otherwise lead to continuation applications for further claims. These terminations reflect a USPTO policy shift toward eliminating underutilized pilots that impose disproportionate administrative burdens, similar to streamlined disclosure or post-action programs like the Quick Path Information Disclosure Statement (QPIDS), though QPIDS itself remains operational on a permanent basis for post-allowance information submissions. By ending AFCP 2.0 and Accelerated Examination, the agency aims to redirect resources to core examination functions, potentially encouraging more efficient prosecution practices in continuing applications while prompting applicants to adapt by prioritizing RCEs or alternative prioritized tracks. No empirical data on immediate pendency impacts has been released, but historical AFCP usage exceeded 20,000 submissions annually, suggesting a notable procedural gap for affected applicants.

Controversies and Policy Debates

Claims of Systemic Abuse and Delay Tactics

Critics, including legal scholars and advocates, have alleged that continuing patent applications enable systemic abuse by allowing applicants to indefinitely extend prosecution timelines, thereby delaying patent issuance and creating uncertainty for competitors. This practice, often termed " patenting," involves filing serial continuations to withhold final claims until competitors have invested in developing technologies, at which point broad or tailored claims can issue unexpectedly, potentially disrupting markets. For instance, prior to the 1995 , which standardized patent terms to 20 years from the earliest filing date, continuations could effectively extend monopoly periods by years through prolonged pendency; even post-reform, chains of continuations have been documented averaging 5-10 years or more in certain technology fields, exacerbating examination backlogs at the USPTO. In the pharmaceutical sector, accusations of "" highlight how , particularly continuations-in-part (CIP), permit filing secondary patents on minor modifications—such as new formulations, delivery methods, or combination therapies—derived from the original disclosure, allegedly to block generic entry beyond the primary patent's expiration. A 2009 analysis noted that such tactics extend effective exclusivity, with examples including multiple continuation filings around blockbuster drugs like those for inhalers or opioids, where secondary patents covered device integrations or dosing regimens, delaying competition by 3-6 years on average in cited cases. Empirical studies have found that pharmaceutical patents frequently involve continuation families comprising 5 or more applications, correlating with higher litigation rates against generics under the Hatch-Waxman Act. Delay tactics are further claimed to manifest in strategic claim refinement, where applicants use to monitor competitors' products during extended examination—averaging 2-3 years per —and amend claims to encompass without prior art anticipation from the original filing date. Research analyzing over 1 million USPTO from 1976-2017 indicates that continuation usage surged post-1995, with applicants in electronics and biotech fields leveraging pendency delays to "invent" claims post hoc, as evidenced by linguistic convergence between issued claims and contemporaneous competitor disclosures. Proponents of reform, such as the , argue this undermines the patent bargain by rewarding hindsight drafting over genuine , contributing to a 20-30% increase in non-practicing entity (NPE) assertions of delayed in litigation datasets. These claims have prompted USPTO inquiries, including 2006 feedback on practices revealing concerns over "patentably indistinct" claims across members, which strain examiner resources and inflate maintenance fees without proportional innovation benefits. While of widespread abuse remains debated—with some analyses estimating misuse in under 10% of families—the pattern of elongated prosecution has been linked to broader systemic delays, such as the USPTO's average pendency exceeding 24 months for continuations versus 18 for originals in 2023 data.

Counterarguments: Essential for Innovation and Property Rights

Proponents of continuing patent applications contend that they address fundamental uncertainties in the examination process, where examiners often apply with the benefit of hindsight unavailable to inventors at filing, allowing applicants to refine claims iteratively without forfeiting the original priority date. This mechanism enables pursuit of broader or alternative embodiments supported by the initial disclosure, particularly after restriction requirements or new emerges during prosecution or foreign filings. By facilitating amendments in response to examiner feedback, continuations promote more precise and defensible claims, countering arguments of abuse by emphasizing their role in legitimate adaptation rather than manipulation. These applications bolster incentives by permitting inventors to tailor protection to evolving commercial needs and technological developments, thereby encouraging comprehensive initial disclosures and sustained R&D in uncertain fields like pharmaceuticals and software. Empirical analysis indicates that patents stemming from continuations exhibit higher private value, with elevated renewal rates—such as 5.07% for continuations at eight years compared to applications—and greater likelihood of litigation or reassignment, signaling their strategic importance for high-value technologies. Filings surge post-notice of allowance, with a 613% increase in continuations, reflecting use for strategic expansion once claim viability clarifies, rather than indefinite delay. Restrictions on continuations, as proposed in past USPTO rules, risk impeding this flexibility, potentially increasing appeals and burdens on both applicants and the office while discouraging disclosure. From a property rights perspective, continuations enable patentees to fully exploit a single specification's inventive scope through divisional or continuation-in-part filings, creating robust portfolios that deter infringement and facilitate licensing or enforcement against competitors' workarounds. They allow adjustments to legal shifts, such as post-Alice claim refinements, preserving the economic value of amid doctrinal flux. Reforms like the American Inventors Protection Act have mitigated historical concerns such as submarine patenting by mandating publication and limiting term extensions, underscoring that continuations primarily serve to appropriate returns on disclosed innovations without systemic overreach.

Empirical Data on Innovation Impacts and Misuse Rates

Empirical analyses indicate that continuing applications constitute a growing share of USPTO filings, having tripled in number over the decade leading to 2021, reflecting their strategic in refining claims amid evolving and market conditions. These applications are disproportionately filed in high-value technologies and uncertain inventive contexts, where they yield patents with greater private economic value compared to original filings, as measured by forward citations and market valuations. Such patterns suggest continuations facilitate more precise capture of inventive contributions, potentially bolstering incentives for upstream R&D by enabling applicants to adapt claims post-examination without forfeiting priority dates. However, evidence on broader innovation impacts remains mixed and indirect. While stronger, more tailored rights via continuations may reduce uncertainty in boundaries and support cumulative in complex fields like , theoretical models predict ambiguous effects on follow-on research, with some empirical work from patent policy shifts showing negligible boosts to aggregate R&D investments. For instance, continuations' allowance of new claims on prior disclosures has been linked to higher rates of standard-essential patents in , where they correlate with licensing revenues but also raise holdup risks for implementers, potentially deterring downstream adoption without clear net gains in inventive output. No large-scale causal studies isolate continuations' marginal contribution to R&D spending or patenting rates, though cross-national data on patent scope expansions imply modest positive associations with metrics in knowledge-intensive sectors. Regarding misuse, quantified rates of abusive continuations—such as those enabling through trivial extensions—are low relative to total filings but elevated in litigation contexts, particularly in pharmaceuticals. Secondary patents, often pursued via continuations or divisionals, represent attempts to extend exclusivity in about 10-20% of blockbuster drug cases, yet comprehensive reviews find these delay generic entry by an average of 1-2 years rather than indefinitely blocking , with generics achieving 80-90% post-resolution in most instances. "Long CON" continuation chains, defined as multi-generational filings extending beyond standard terms, comprise only 8.3% of pharmaceutical patent applications but account for 23% of litigated patents, indicating rather than systemic proliferation. USPTO examination data reveal occasional failures to detect duplicate claiming across continuations, with one estimating missed identical inventions in up to 15% of multi-applicant scenarios, though reforms like surcharges for aged continuations aim to curb opportunistic delays without evidence of widespread invalidation rates exceeding 20-30% in post-grant reviews. Overall, while strategic overuse exists, empirical chasms persist between allegations and demonstrated monopoly extensions, with market data showing price erosion via generics occurring reliably after primary patent expiry despite secondary filings.

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  91. https://www.drugpatentwatch.com/blog/does-drug-patent-evergreening-prevent-generic-entry/
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