A continuation application is a powerful tool in U.S. patent law. It allows you to pursue additional or modified claims from the same original disclosure, without having to start the entire patent process over, and without having to worry about things invented after your original filing date counting as “prior art”. Below is a quick overview of how continuations work and why they might benefit you.
1. Teaching vs. Claiming
- Specification (Teach the World)
Every patent application includes a detailed description (the “specification”) that explains how to make and use the invention. - Claims (Define Your Monopoly)
The claims specify the exact legal protection you receive. If a feature isn’t in the claims, you don’t own exclusive rights to it—even if it’s in the specification.
2. The Role of Continuations
- When to File
A continuation must be filed before the original (or parent) application issues. It carries over the same disclosure (text, drawings, etc.) and priority date. - Changing the Claims
The continuation gives you a chance to modify or add new claims. This can be crucial if you discover valuable aspects of your patent application that weren’t claimed initially. Because you can only pursue one invention in each patent application (the one can have many claims and variations, of course), if you invented the car, you would need to file separate patent applications for the muffler, the engine, the steering system, etc. These can be done via continuation practice.
3. Why Not Claim Everything at Once?
- Cost and Complexity
Drafting numerous claims can be expensive (official fees, attorney costs) and may trigger more scrutiny from examiners. On the flip side, I have seen inventors submit hundreds of claims in an apparent effort to overwhelm the examiner. Don’t do that. - Strategy
Many inventors opt to protect the most essential features first. Then they file continuations to capture additional features or improvements over time.
4. Key Takeaways
- File Early: You must submit your continuation before the parent patent issues.
- Same Disclosure: You can’t add new subject matter; the specification remains the same. If you need to add something, talk with your patent lawyer about a continuation in part.
- Refine or Expand: Use continuations to pursue broader or more detailed claims, and definitely make sure to cover all of the inventions you think are valuable.
- Maintain Flexibility: Continuations let you respond to new insights or market demands without losing your priority date.
Want More Details?
Check out the accompanying video on Innovation Cafe to see how continuations can be a strategic advantage for securing comprehensive patent protection.