Maiorana Patent Law, PA

What Is a Continuation-in-Part Application?

In another article, I discuss using a continuation application as a way to broaden the claims. I discuss that here. I briefly discuss a continuation-in-part application (CIP) versus a broadening continuation.

One question someone asked me was why would I file a continuation-in-part application and not just a true continuation application? The issue occurs when you need to add additional subject matter that was not disclosed in the earlier filing date. New information or embodiments may have been discovered after the initial filing.

CIP filings can be used as part of a portfolio approach - as part of a patent continuaiton strategy. For example, in a small patent portfolio for a new business venture, there may be a target of 5-6 applications, sometimes 10-20 applications. One good practice is to file a core document filed that has the overall structure and description of the invention. We do this a lot with software patent applications, particularly when they relate to a software app that is usable on a smart phone. We discuss that here.

So after the initial structure is disclosed in one (or two or three) filings, additional features may be focused on in a follow-up application. The follow-up would then likely be a continuation in part application. So the core ideas would get the earlier filing date, then the additional ideas would get the later filing date.

The natural follow-up question is why not include everything in the original filing? There are a number of reasons. One is the cost of the original filing. We try to keep our cost structure to operate as affordable patent lawyers. The second is the time to prepare the original filing. On the cost side, if we file the core document early on, we can often make that work within our normal flat rate fee schedule. Sometimes we do a “jumbo filing” with an increased budget. We can normally make each of the follow-up filings also work on our flat rate fee schedule. After a number of filings, the overall patent portfolio develops, and we have a balance between earlier filing dates, and overall time and budget concerns.

Also, if all of the information was attempted to be incorporated into one filing, that would likely delay the original filing date. By getting some information filed early on, we get an earlier filing date. Then we can follow-up with additional filings. In general, the more filings that we do, the better job we can do to protect the overall patent portfolio. Every business needs to balance the overall cost of patent application filings versus the potential reward. In general, a small patent portfolio is more valuable than a one-off US patent application.

You can always ask one of our Affordable Patent Lawyers for additional information. Please call us at MI - 586-498-0670 or CA - 408-890-6549