Other Non-Provisional Patent Applications: Patent Application Types and Strategies – Part 5

For each of design patent applications and utility patent applications, there are three types of applications and one procedure that should be discussed; namely, Continuation, Divisional, Continuation-in-part, and Request for Continued Examination (“RCE”).  Each of these may be filed when and claim priority to any currently pending patent application (a “parent application”).  The resulting “child” application then relies upon the priority dates for the parent application.

Benefits:  Earlier priority claims for overlapping invention parts means less a patent examiner can use to argue your invention is not patentable.  Families of patents (see later entries) can strengthen your patent portfolio.  If a patent in a particular patent family is still pending when you are trying to enforce an earlier patent in that family, you have flexibility to get more focused patent coverage through the pending application than you had before.

Risks:  Because the expiration date of a patent is dependent on its priority date, an earlier priority date means the patent expires sooner.

Claiming Priority:  Claiming priority to a parent application means that the new child application gets benefit of the filing date of the parent application (or its priority date) to the extent that the child application claims the same invention.  If the child application isn’t filed correctly and claim correct priority to the parent application when the parent application is pending, the priority claim is lost and there is a chance that the parent application may be used against the child application in examination.  A claim of priority, however, can generally prevent the parent application from being used against the child application by a patent examiner, and generally requires the patent examiner to find other references before the priority date of the parent application to use in rejecting the child application’s claims.  There may be multiple levels of parent and child applications and the child’s claim to the priority for the parent strings back to the original priority of the string for any invention parts that are common between the applications.