A continuing patent application such as a divisional, continuation, or continuation-in-part (CIP) is possible in the USA. But what is the deadline to file one of these applications?
What Is a Continuing Patent Application?
A continuing patent application is one that claims priority to (or the domestic benefit of) a prior U.S. patent application or PCT international application that designated the USA. (See 35 U.S.C. §§ 120 and 121 and 37 C.F.R. § 1.53(b)). That means these are follow-on patent applications. They always relate back to one or more prior “parent” application(s). These can also be referred to as “child” applications in a patent “family”.
In other countries, the terminology for continuing applications may differ. For instance, many countries permit only subsequent “divisional” applications, and do not have different names for different types of continuing applications.
Deadline to file a Divisional, Continuation, or CIP Patent Application
Section 120 of the U.S. patent laws establishes that a continuing application (including divisionals, continuations, and CIPs) must be filed “before the patenting or abandonment of or termination of proceedings” of a parent application. In addition, USPTO regulations under 37 CFR § 1.78(d) state that a continuing application can be filed while the parent application is “copending”.
The Federal Circuit has ruled that so-called “same-day” continuing application filings are permitted, meaning a continuing application can be filed on the same day that a parent application issues as a patent. This confirmed longstanding U.S. Patent & Trademark Office (USPTO) practice, despite the statutory language literally saying “before” rather than “copending” or referring to the same day of patenting. Currently, this means that continuing applications can be filed up to and including the date that a parent application issues as a granted patent.
Another important aspect of the USPTO’s “copending” requirement is that the parent case cannot be abandoned. If the parent case will not issue, but an office action or the like is outstanding, then it is necessary to file the continuing application either (a) during the shortened statutory response period in the parent case or (b) after the shortened statutory period but before the maximum six-month statutory period along with the payment of monthly extension of time fees in the parent application. In other words, extension of time fees may be required in the parent case in order for the continuing application to be considered “copending”. This is referenced obliquely in MPEP § 710.02(e) and more clearly in old USPTO notices.
For continuing applications related to a prior PCT international application, such as a PCT “bypass” application in the U.S., the USPTO’s “copending” requirement means that the continuing application must be filed by the national phase entry deadline. In the U.S. this is 30 months from the earliest priority date.
The deadlines for continuing applications in other jurisdictions (often referred to only as divisionals) varies considerably. Deadlines for divisional or other continuing applications in foreign patent offices may arise much sooner than the deadlines under U.S. patent law and practice. For instance, Brazil requires divisional filing before a final office action or allowance is issued, which is a date that cannot be precisely determined in advance.
It is a best practice to file any continuing application as early as possible, and in the USA no later than with the payment of the issue fee or by the shortened statutory period deadline for a response in the parent case. While it may be possible to file a continuing application after such a date, problems and additional fees could arise.
For example, the Federal Circuit decision allowing continuing application filings on the same day as issuance of the parent is contrary to the literal language of the status, and might be overturned someday. There may also be filing system outages, illnesses or other complications that make a last-minute same-day filing difficult as a practical matter.
Also, the USPTO’s switch to “eGrant” electronic-only patents means that the delay between issue fee payment and subsequent issuance will become shorter than when hard copies were printed and mailed in the past. Indeed, on this point the USPTO has formally commented that reducing patent pendency is required by statute, while giving applicants time to file continuing applications is not, so “[a]pplicants should file their continuing applications as early as possible, preferably prior to payment of the issue fee to avoid any loss of rights.”
If an office action is outstanding in a parent case that will be abandoned, filing continuing applications early also avoids the need to pay an extension of time fee in the parent. The need to pay that extension of time fee in the parent might also be easily overlooked and missed, jeopardizing any resultant patent.
Lastly, delays in filing a continuing application may also delay examination and chip away at the available term for any resultant utility or plant patent issuing from a continuing application. (However, this point is not a concern for design patents, which have a fixed term from issuance).
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.