Paris, November 25, 2021 – According to a study of applications filed at the USPTO in fiscal year 2015, 1 approximately 30% of applications filed were continuing applications. As many US claim drafting principles stand in stark contrast to their European counterparts, European applicants may be missing out on the unique opportunity to create a diverse US patent portfolio through continuing application filings.
At the European Patent Office, any later-filed application relating to an earlier-filed European patent application is referred to as a divisional application. In US Patent Office nomenclature, the correspondingly broad term is a continuing application.
Continuing application refers to any of three more particular types of applications including:
A divisional application is an application having the same disclosure (e.g., same drawings and specification) as the earlier-filed application and having claims directed to an independent or distinct invention. The determination of what constitutes an independent or distinct invention results from a Restriction Requirement issued in the earlier-filed application. While different standards are applied, Restriction Requirements are analogous to unity of invention rejections from the EPO.
Divisional applications are filed in the specific circumstance in which some claims of the earlier-filed application were subject to a Restriction Requirement. Generally speaking, divisional applications are filed with the restricted claims of the earlier-filed application. Additional claims within the same category (e.g., method, apparatus, etc.) of the restricted claims are frequently added to round out the scope of claim coverage. However, adding claims in a different category may trigger the issuance of a further Restriction Requirement in the divisional application.
Like a divisional application, a continuation application is an application having the same disclosure as the earlier-filed application. Claims of a continuation application may be directed to any subject matter disclosed in the parent application and may be directed to claims in the same or different category relative to the earlier-filed application. As discussed in detail below, Applicants have significant flexibility in drafting claims for continuation applications relative to European practice.
Applicants are prohibited from adding new matter to the earlier-filed application in divisional and continuation applications.
A continuation-in-part (CIP) application is an application repeating the disclosure of the earlier-filed application while adding new matter. The claims of CIP application may be supported by the earlier-filed application and/or the new disclosure material.
As there is no European equivalent to a CIP application, European applicants may be drawn to the unique opportunity presented by CIP applications. However, any new matter added to the CIP application is not entitled to the priority date of the parent application. Particularly for European applicants who file a European patent application followed by a PCT application that later enters the US national stage, a significant amount of time may pass between the original application filing and the CIP application filing.
As a result, European applicants may be surprised when the earlier-filed application is cited as prior art against the claims of the CIP application directed to the newly added subject matter, which do not benefit from the priority of the earlier-filed application. In such cases, the earlier-filed application is treated like any other reference under 35 USC § 102.
Continuing applications must meet the co-pendency requirement of 35 USC § 120, which requires continuing application to be filed “before the patenting or abandonment of or termination of proceedings on the first application or an application similarly entitled to the benefit of the filing date of the first application.”
As established by the Federal Circuit,2 applicants may file a continuing application on the Issue Date of a US patent application. Compared to European practice in which a divisional application must be filed the day before the European Patent Bulletin mentions the grant of the European patent, applicants have ever so slightly more time to file continuing applications in the US.
Continuing applications are subject to fewer US Patent Office fees relative to fees imposed by the European Patent Office for divisional applications.
For instance, there is no US equivalent to annual renewal fees of Article 86(1) EPC and Rule 51(3) EPC. Instead, US patents incur maintenance fees due 3.5 years, 7.5 years, and 11.5 years after issuance of the patent.
There is also no US equivalent to the additional fee of Article 2(1) EPC and Rule 38(4) EPC fee based on the generation of the divisional application.
Like any patent application, continuing applications are subject to payment of a filing fee, search fee, and examination fee. Therefore, applicants can expect substantially the same fees to apply to the parent application and any continuing applications.
Claims of both divisional and continuation applications must be supported by the written description of the earlier-filed application. Further, applicants are prohibited from adding any new matter. However, the restriction against new matter pursuant to 35 USC § 112 is substantially less exacting than the restriction against added subject-matter pursuant to Article 123(2) EPC.
Many constraints placed on drafting claims for European divisional applications and for amending claims generally in European prosecution as a result of Article 123(2) EPC simply do not exist in US practice.
The principle of intermediate generalization does not exist as such in US practice. Therefore, there is no restriction against “cherry picking”. Applicants are generally free to combine features even when such combination is not explicitly set forth in the application and to extract specification features in isolation from a disclosed combination. Applicants may also be able to rely solely on the figures for claim amendments.
In the US, there is no requirement that the claims be “unambiguously derived” from the original disclosure. Instead, the subject matter of the claims must be “reasonably conveyed” to the skilled person, and the claims may be directed to any subject matter that is expressly, inherently, or implicitly supported by the disclosure. Further, applicants are generally free to reword the specification in the claims and to use claim terms not found in the specification because there is no requirement that claim terms be found verbatim in the specification.
Variety of Claim Scope: The general flexibility of US claim drafting provides applicants with the opportunity to create a portfolio of patents of varied claim scope. The variety of claim scope can be helpful in the event of patent litigation. For example, according to US principles of claim construction, different claim terms are presumed to have different meanings absent evidence to the contrary.3 Thus, by filing continuing applications with alternative claim language, applicants may avoid any adverse or undesirable claim interpretations as to one patent from impacting other patents in the same patent family.
Evolving Marketplace: Over the potential lifetime of a patent family, the marketplace evolves with new products and new competitors. To the extent that the original disclosure supports such claims, applicants can use continuing applications to offensively modify the scope of patent protection as the market evolves. As previously explained, there is no requirement that a specific combination of features be described in order to be claimed in combination. Therefore, applicants can generally add or subtract features as necessary to capture a competitor’s product within the claim scope. The addition and subtraction of claim features can also close up unintended design around loopholes in the claims.
Creating Uncertainty: Overall, filing of a continuing application creates uncertainty as to the final scope of patent protection and may serve as a deterrent to new competitors entering the marketplace.
Benefit of Hindsight: As the saying goes, hindsight is 20/20. Generally, continuing applications provide an opportunity for applicants to benefit from the analysis of prior art not known at the time of application drafting. In continuing applications, applicants can broaden the scope of undesirably narrow claims and/or pursue claims of alternative scope that are novel and non-obvious over the same prior art documents cited in the earlier-filed application.
Discovery of New Prior Art: New and relevant prior art documents may come to an applicant’s notice after the issuance of the US patent. Such prior art documents could arise from examination in foreign patent offices, litigation, and/or post-grant review challenges. For applicants with global patent portfolios including applications still pending examination upon issuance of a Notice of Allowance from the USPTO, filing a continuing application provides applicants with an opportunity to have such prior art documents considered by US Examiners and, if necessary, adjust the claims accordingly. Further, the additional citation of references bolsters the validity of any issued patent, which enjoys a presumption of validity.
As the possibilities and motivations for filing continuing applications are endless, your contacts at Regimbeau with expertise in both US and European patent law are available to assist you in developing a strategy for a strong and diverse global patent portfolio.
