In the U.S., a Continuation or “CON” is a follow-on patent application that claims an innovative concept that was described in a previously-filed “original” application, but has not been claimed in that original or any of its other CONs.
Since a CON presents the same specification as the original application, it receives the original’s priority date, which determines what qualifies as prior art.
Because only its claims are new, the cost of preparing a CON is typically much less than the cost of preparing the original application.
Note that a new CON can be filed only while the original or one of its CONs is pending.
Some companies choose to grow their application families early and quickly by filing multiple CONs at the same time, in hopes of speedily obtaining maximum protection.
Others choose to trickle out CONs in a serial fashion to keep potential infringers off-balance.
Still others always keep at least one CON pending to counter the possibility that patentability-threatening prior art will unexpectedly emerge.
Compared to the claims of the original application (and any of its other CONs), a new CON can present claims that are narrower, broader, or simply different (with respect to their targeted technology, field of use, implementation, and/or innovative concept), provided the concepts covered by those claims were properly described in the original application.
Note that everything else being equal, narrower claims tend to be allowed more quickly and broader claims more slowly (and only after being rejected, perhaps repeatedly). Likewise, narrower claims typically are more easily designed around compared to broader claims, so they tend to be less valuable. And of course, once issued, narrower claims are generally less likely to be invalidated than broader claims.
Even though its job might seem simple, the value of a CON can be tremendous. For example, by filing a CON (and potentially a series of CONs), your company can preserve its ability to file claims that precisely target the future products and/or processes of:
- Your company;
- Your company’s competitors;
- Your company’s future licensees; and/or
- The future owner of your company’s CON;
that implement and exploit an innovative concept described in the original application.
Filing a CON can be particularly useful when the claims of the original application (or any of its CONs) do not clearly cover an emergent valuable implementation of your company’s innovative concept, yet if they did your company would much more easily convince a jury of infringement (if a lawsuit were even necessary to bring an infringer to heal, which it likely wouldn’t be once your claims precisely target their product).
Clearly, for the CON tactic to work, you must keep your patent attorney in the loop and aware of changes to your products/processes and to the emergence of concerning competitive products/processes. Doing so will enable your attorney to advise when your issued claims no longer cover those developments, which instead might need to be covered via the claims of a CON.
As hinted above, via a CON, your company preserves the option to obtain relevant valid claims even when unexpected prior art emerges that invalidates the broadest claims of your company’s original patent (or any related patents). That is, assume that as your company is preparing to enforce its original patent against an infringer, you learn of prior art that invalidates that original patent’s most valuable claims. Because your company has a pending CON, you potentially can add new claims to that CON, those new claims having the broadest reasonable and valid scope with respect to the known prior art (including the newly discovered prior art) yet also covering the infringer’s activities. Thus, once your company’s CON issues as a patent (which potentially can be expedited), your company can resume pursuing that infringer with much improved odds of successfully proving infringement, and avoiding invalidity, of at least some claims. Knowing that your company has at least one very strong patent, most infringers will come to the bargaining table with checkbook in hand.
In short, CONs can be extremely valuable.
At times, the USPTO has moderately expedited examination of CONs, and at other times deferred them in favor of original applications, so, unless you have formally expedited your CON, it can be difficult to predict how much time will pass before your CON will be examined.
When possible, the USPTO tends to assign CONs to the same examiner who examined the original application, but this is not guaranteed. Thus, sometimes CONs receive the benefit of somewhat quicker examination, the learning curve the previous examiner climbed, and any goodwill earned with that examiner, but again, no guarantees.
As with all patent applications, when substantial value can be obtained from expediting examination, your company should employ one of the formal expediting mechanisms (e.g., Track One). In contrast, when the situation warrants it, your company should employ one or more of the available examination delay tactics. In other words, your company’s IP strategies can and should greatly influence the speed at which your CON is examined.
Assuming that all Maintenance Fees are timely paid, a patent issued from an allowed CON application that stays in force for its entire term likely will expire by no later than 20 years from the original application’s filing date (possibly (but not usually) extended due to regulatory delays, such as delays in prosecution caused by the USPTO).
When it comes to foreign patents, proceed cautiously, as some countries/jurisdictions do not allow, or strenuously resist allowing, broader claims in follow-on applications (which somewhat confusingly tend to be called “divisionals” outside the U.S.). To possibly avoid that predicament (depending on the country/jurisdiction), consider including potentially desired claims, some written broadly and others narrowly, as paragraphs, and without the word “claim”, within the description of your original applications. Doing so should greatly increase the odds that you will be able to present them in a later-filed foreign divisional.