A continuation application is often filed while a patent application is pending, allowing inventors to modify or add claims to the pending application without affecting its filing date. Over the past several years, the number of continuation applications filed with the U.S. Patent and Trademark Office has significantly increased – 76,898 applications were filed in fiscal year 2015, compared to 31,271 applications filed in fiscal year 2009. Law360 contacted Finnegan attorney Linda J. Thayer for her insight on filing a continuation application.
Although the number of continuation applications has increased, Thayer noted that one disadvantage of this practice is that examiners may find prior art in a continuation application that was not discovered in the parent application. She said, "If the record reflects that this piece of art is potentially relevant, and the continuation contains claims that are closely related to those of the parent, it may cast a cloud over the parent. [But] it is still preferable to know about the prior art than not knowing and finding out during litigation that the parent patent is invalid. Finding out during prosecution of a continuation means that the claims of the parent could be amended and strengthened in the continuation." To avoid this, she suggested drafting claims that use different language from the parent application so that it’s not as obvious whether art cited in the continuation application brings into question the validity of the parent patent.
Thayer believes that a continuation applications can be helpful in keeping a patent family alive in the midst of changing patent laws. She said, "With the passage of Alice, more patent claims have been found invalid as patent ineligible. If the patent is a member of an open patent family, and there is sufficient supporting material in the specification, the claims—amended to comply with the most recent guidance—may be able to be refiled in a continuation."
Award/Ranking
Finnegan Named Firm of the Year at the 2024 Managing Intellectual Property Americas Awards
April 26, 2024
Commentary
World IP Day: EPO Reveals 33% Jump in Cleantech Inventions Over Five Years
April 26, 2024
Award/Ranking
Finnegan Shortlisted for the 2024 Asian Legal Business Japan Law Awards
April 26, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.