Request for Continued Examination

Continuing patent application

Under United States patent law, a continuing patent application is a patent application which follows, and claims priority to, an earlier filed patent application.

For instance, a continuing patent application may be a continuation, divisional, or continuation-in-part application. Those are three special types of patent applications. While continuation and continuation-in-part applications are generally a US concept, divisional patent applications have wider application and their availability is required by Article 4G of the Paris Convention.

Early history

From 1838 to 1861, inventors could file patent applications on improvements to their inventions. These were published as "additional improvement patents" and were given numbers preceded by "A.I.". About 300 of these patents issued.

Current United States patent law

Under current US patent law, inventors may file several different types of patent applications to cover new improvements to their inventions or to cover different aspects of their inventions. These types of patent applications include "continuation", "divisional", "continuation in part", and "reissue".

Summary of continuing patent applications in the US
Type Disclosed in parent? Claimed in parent?
Divisional Yes Yes
Continuation Yes No
Continuation-in-part No No

Continuation

A "continuation application" is a patent application filed by an applicant who wants to pursue additional claims to an invention disclosed in an earlier application of the applicant (the "parent" application) that has not yet been issued or abandoned. The continuation uses the same specification as the pending parent application, claims filing date priority of the parent, and must name at least one of the same inventors as in the parent. This type of application is useful when a patent examiner has allowed some but rejected other claims in an application, or where an applicant may not have exhausted all useful ways of claiming different embodiments of the invention.

Request for continued examination

A request for continued examination (RCE) is a request from an inventor to continue to try to get a patent after the patent office has issued a "final" rejection. The inventor essentially pays an additional filing fee and then continues to argue their case with the patent examiner. No RCE prior to June 8, 1995. See 37 CFR 1.114.

Divisional

A "divisional application" also claims filing date priority from the parent, but differs from a "continuation application" in that a divisional application claims a distinct or independent invention based upon pertinent parts "carved out" of the parent application's specification. A divisional application need not name any of the inventors named in the parent application. This type of application is often the result of a "restriction requirement" by an examiner, because a patent can only claim a single invention (cf. unity of invention).

Continuation-in-part

A "continuation-in-part" application ("CIP" or "CIP application"), claiming filing date priority from a parent application, is one in which the applicant adds matter not disclosed in the parent, but repeats some substantial portion of the parent's specification, and has at least one common inventor as named in the parent application. This is a convenient way to claim enhancements developed after the parent application was filed. It is the successor to the earlier "additional improvement" patents mentioned above.

Reissue

If an issued patent is found to be defective, then the patent owner can surrender the patent and refile the original application to correct the defect. One such defect is that the issued patent fails to claim the full scope of the invention. Thus an inventor can resubmit the patent application with broader claims and attempt to get the full coverage they are entitled to. They are not, however, allowed to add new features to their invention.

A reissue application that attempts to get broader coverage than the original issued patent must be filed within two years from the grant date of said original issued patent.

2007 changes to USPTO continuation practice

On August 21, 2007, new regulations under 37 CFR were published that significantly alter continuation practice before the USPTO effective November 1, 2007. Previously, USPTO rules allowed an inventor to file as many continuations as necessary in order to get their desired breadth of claims. This was criticized for creating uncertainty in the marketplace as to what inventions are covered or could be covered by a given patent application. An inventor, for example, could have sought to get claims with limited scope approved early, and then continue to file subsequent Continuations over a period of many years seeking broader coverage. For example, the inventor Jerome Lemelson filed a series of continuations over a period of thirty years to get a very broad patent to issue on bar code readers. This patent issued in 1984, long after bar code readers had become an integral part of the US economy. Jerome Lemelson was then able to collect over a billion dollars in license fees from large companies using bar code readers.

In order to minimize this alleged abuse of the patent system, the USPTO proposed several changes to the rules governing how many continuations an applicant can file. These proposed rule changes were announced on January 3, 2006, and were published in final form on August 21, 2007, after various modifications were made pursuant to input received as public notice and comment (during which the public was invited to comment on the proposed rule changes). Many of the provisions in the new rules go into effect November 1, 2007; however, certain additional exemptions apply for continuation applications filed before the publication date of August 21, 2007, even after November 1, 2007.

The new rules limit an inventor to filing two continuation applications for each type of invention disclosed in an original patent application, unless the applicant can show "good cause" for filing additional continuations. Furthermore, applicants can file only one RCE for each "family" of applications (that is, the group of applications including original applications and each of the continuation applications claiming the benefit of priority of the original application) unless the USPTO grants the applicant permission upon showing "good cause.

The proposed rule changes are generally opposed by patent agents and attorneys, manufacturing companies, biotechnology companies, and independent inventors. The concerns they have raised are that the rule changes fail to take into account the difficulties that are commonly encountered in getting a patent and that this will result in more inventors failing to get the full range of patent protection they are entitled to. They are also concerned that the rule changes are not consistent with the laws governing continuation practice.

The rule changes are generally favored by software companies, electronics companies and US government agencies for the reasons given above. Those that favor the rule changes feel that said changes are consistent with the laws governing continuation practice.

On August 22, 2007, inventor Dr. Triantafyllos Tafas sued the USPTO in the United States District Court of the Eastern District of Virginia to have the rule changes declared in conflict with US patent law and therefore invalid. The case is still pending. On October 9, 2007, pharmaceutical company GlaxoSmithKline filed a similar suit and is seeking a preliminary injunction to prevent their implementation. The court has consolidated the two cases and scheduled a hearing on GlaxoSmithKline's motion for October 31, one day before the rules go into effect. On October 31, the court granted a preliminary injunction that prohibits the USPTO from putting into effect the patent rules on continuations and claims that were scheduled to come into effect on the following day. On April 1, 2008, the injunction was made permanent.

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