Chapter §11.07 Continuing Application Practice

• Jurisdiction: United States

§11.07 Continuing Application Practice

[A] Introduction

A common patent prosecution scenario involves an applicant receiving a final rejection of some of the claims in her application but an allowance of other claims. The applicant would like to immediately obtain a patent on the allowed claims (possibly because she plans to sue an infringer of those claims), while at the same time continue prosecuting the rejected claims rather than appealing to the USPTO Patent Board.¹⁹⁹

The applicant in this situation has the option of filing a continuation application. Using continuation applications is a way of prolonging the application process; the continuation application extends the patenting transaction that began with the applicant's earlier-filed application.²⁰⁰ For a fee, the applicant will be able to file a new application carrying forward the written description and drawings of her first-filed ("parent") application plus its rejected claims, and continue their prosecution in the continuation ("child") application.²⁰¹

Currently no limit exists on the number of continuation applications that may be filed.²⁰² Applicants can file a chain of continuation applications, each one claiming the benefit of the first/parent application's filing date. Today's patent applicants may be less inclined to file multiple continuations than they would have before Congress changed the method of computing patent term under the Uruguay Round Agreements Act of 1994 (URAA), however.²⁰³ Under current law, the longer that the prosecution of the original application is extended through the filing of continuation applications, the shorter the term of any resulting patent.²⁰⁴ Thus, the length of time in which a patentee could sue and recover for infringements would be shortened. Moreover, genuine abuse of the continuation process may give rise to an equitable defense of "prosecution laches" if and when a patentee later attempts to enforce her patent.²⁰⁵

[B] Three Types of Continuing Applications

The continuation application described in the preceding paragraphs is actually but one of three kinds of continuing applications, a generic term for later-filed patent applications that contains some or all of the disclosure of the applicant's earlier-filed application and that name at least one inventor also named in the earlier application.²⁰⁶ To summarize, the three types of continuing applications are:²⁰⁷

(1) Continuation Application: A second application for the same invention claimed in the earlier application and filed during the lifetime of the earlier application (i.e., filed while the two applications are still "co-pending," that is, the second application must be filed on or before the day that the earlier application issued as a patent²⁰⁸). The continuation application encompasses all the disclosure of the earlier (parent) application and does not add any new matter to that disclosure.²⁰⁹ It claims the same invention claimed in the parent application, although there may be some variation in the scope of the subject matter claimed.

(2) Continuation-in-Part (CIP) Application: A second application filed during the lifetime of the earlier application that encompasses some substantial portion or all of the disclosure of the earlier application and also adds additional matter to that disclosure.²¹⁰

(3) Divisional Application: A second application for an independent and distinct invention, carved out of the earlier application during its lifetime and disclosing and claiming only subject matter disclosed in the earlier application.²¹¹ A divisional application is appropriate when the earlier (parent) application claimed more than one invention. A patent may claim only a single invention, so any other invention must be "divided out" and claimed in a separate application. The divisional application is often filed as a result of a restriction requirement made by the USPTO examiner.²¹²

The three types of continuing applications are depicted in Figure 11-1.

FIGURE 11-1. Three Types of Continuing Applications Figure

[C] Filing Requirements

Currently an applicant may file any of the three types of continuing applications under USPTO Rule 53(b).²¹³ That rule in turn specifies that a continuing application, "which may be a continuation, divisional, or CIP application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and [37 C.F.R.] §1.78(a)."²¹⁴ The latter provisions mandate several important conditions for filing continuing applications:

(1) Timing: A continuing application must be filed while its earlier-filed (parent) application is still pending (i.e., has not been abandoned or issued as a patent).²¹⁵ In other words, when the continuing application is filed, the continuing application and the prior-filed (parent) application must be "copending."²¹⁶

Section 120 of 35 U.S.C. mandates that a continuing application be filed "before the patenting . . . of . . . the first [i.e., priority] application . . ." (emphasis added). Consistent with USPTO practice in this context, the Federal Circuit interprets the statutory word "before" liberally. In a 2016 decision, Immersion Corp. v. HTC Corp.,²¹⁷ the Federal Circuit upheld the agency's long-standing practice of accepting "same day continuations"—i.e., allowing the filing of continuing applications on the same day that the priority application issues as a patent.²¹⁸

(2) Common Inventor: There must be at least one common inventor on the earlier-filed (parent) and continuing applications.²¹⁹

(3) Reference: A continuing application must include a specific identification or reference to the earlier-filed (parent) application that the continuing application relates back to (i.e., the earlier-filed (parent) application whose filing date is claimed for the continuing application).²²⁰ The earlier-filed application must be specifically identified by USPTO serial number in the first sentence of the continuing application following its title.²²¹ The reference to the earlier-filed application must be included in the continuing application either when it is filed or added to the continuing application within a designated time after filing.²²²

For example, U.S. Patent No. 7,973,130 ('130 patent), which issued in July 2011, is assigned to Stanford University. The '130 patent is directed to "mammalian tumor susceptibility genes" and their uses, such as diagnostic identification of genetic predisposition to cancer. The continuation application from which the '130 patent issued was filed on October 29, 2003. The '130 patent's reference to earlier-filed applications cites a series of related continuing applications dating back to 1996.²²³

As interpreted by the Federal Circuit, Section 120 of 35 U.S.C. can be exacting in its rules for including the "specific reference" to an earlier-filed application in order to obtain the benefit of that application's filing date.²²⁴ Practitioners may choose to trade off that benefit in exchange for a longer patent term, but do so at a risk.

In this regard the Circuit's 2018 decision, Natural Alternatives Int'l, Inc. v. Iancu,²²⁵ serves as an important cautionary tale for patent prosecutors prosecuting a chain of related applications. As detailed below, Natural Alternatives Int'l (NAI) attempted to gain patent term by amending the priority claim of one of several applications in its chain of related applications.²²⁶ In so doing, NAI lost the benefit of a "parent" patent's earlier filing date and thus rendered a later-filed "child" patent vulnerable to a greater universe of prior art. In short, NAI's amendment to gain patent term for its child patent made its own parent patent available as prior art that invalidated (via anticipation) the claims of the child patent. Affirming the USPTO's determination to cancel the claims of the child patent, the appellate court would not permit NAI to "have it both ways",²²⁷ that is, gain term as well as benefit.

More specifically, Natural Alternatives involved a chain of eight continuing patent applications plus an intervening provisional application, all filed by NAI between 1997 and 2011. The applications generally disclosed a dietary supplement for improving athletes' endurance. Each of the eight applications in the chain originally claimed the benefit of priority back to the 1997 filing date of the earliest-filed ("parent") application, which issued in 1999 as U.S. Patent No. 5,965,596 ('596 patent).

During later prosecution, however, patent applicant NAI attempted to gain more term for the patent issuing from its fifth application in the chain. Although that application had originally claimed priority to the first through fourth applications as well as a provisional application filed by NAI in 2003, NAI decided to amend the priority claim of the fifth application. In September 2008, NAI amended the "Cross Reference of Related Applications" statement in the fifth application so as to claim only the benefit of its 2003-filed provisional application, but not to continue claiming the benefit of the earlier filing date of its first through fourth continuing applications (the first having a 1997 filing date). NAI's sixth through eight applications all claimed the benefit of priority to the earlier filing date of the first through fifth applications (as well as the provisional application). In November 2011, the last (eighth) application in NAI's chain issued as U.S. Patent No. 8,067,381 ('381 patent). As explained below, the Federal Circuit would later consider (and affirm) that the '381 patent (eighth application) was invalid as anticipated by the disclosure of the '596 patent (first application).

After patentee NAI sued Woodbolt for infringement of the '381 patent in December 2011, Woodbolt in May 2012 sought and was granted inter partes reexamination of the '381 patent.²²⁸ Woodbolt contended that "the asserted claim to priority of the '381 Patent is defective" because NAI "deliberately and expressly terminated [its] claim to the...