Continuation-in-Part Patent Applications: Patent Application Types and Strategies – Part 8

A continuation-in-part patent application (often called a CIP) is a patent application that has some aspect of the invention from the parent application in common and claims priority to it, but may include additional or different invention disclosure.  It must be filed while the parent application is pending and gets to claim the benefit of the priority date for the common invention disclosure it has with the parent application.  The differences between a continuation-in-part application and its parent may range from nearly identical with a few minor changes, to looking nothing like each other depending upon the purpose for the priority claim.

Continuation-in-part applications can be used to: 1) expand the application coverage from a prior application to include invention improvements and modifications or missing disclosure; 2) maintain pendency of an application after claims in the parent application have been allowed; 3) prosecute claims that were disallowed in the parent application; and 4) prosecute additional claims not previously submitted but directed to an invention disclosed in the parent application.  There are other strategic uses for continuation-in-part applications, but these are the main uses.

Continuation-in-part applications expire 20 years from their filing date unless the examiner required a “terminal disclaimer” or some of its claims rely only on the disclosure of the parent application.  Some of the claims of a CIP application may expire on different dates from the other claims in the patent if they rely on different claims of priority for their disclosures.  A terminal disclaimer is a document that indicates that the claims of one patent to an applicant are obvious in view of the claims of another patent to the same applicant.  It basically says that the two patents must remain together (same owner) and that they will expire at the same time.