• • A new application is a straightforward option for protecting new developments, but it cannot take advantage of the priority date of the previously filed application (or “parent application”).  The priority date is important because the universe of references that the USPTO can use to reject a patent claim is fixed by an application’s priority date.  In general, the earlier the application’s priority date, the higher the chance of obtaining a patent.
  • A continuation application inherits the parent application’s priority date—but it is limited to the parent application’s disclosure.  New developments since the original patent filing cannot be described in a continuation application because new matter cannot be added to a continuation application’s disclosure.
  • A CIP application permits a patent applicant to add new subject matter to the existing disclosure of the parent application while retaining the priority date for claims based on the original disclosure.  The claims of the CIP can be directed to the new subject matter, the old subject matter or a combination of the two.  

• • Application P is published or patented, disclosing a process having steps 1–10.
  • Thirteen months later, application C is filed, disclosing additional step 11 and claiming both the 10-step process and a process having steps 1–11.

C’s claim of the 10-step process is entitled to P’s priority date, but C’s claim of the 11-step process is not.  As a result, references that came after P’s priority date can be cited against C.  Moreover, because P was published more than a year before C’s filing date, P itself can be cited as prior art against C’s claim for the 11-step process, including steps 1–10.  

An applicant’s own disclosure can sometimes be used to find a claim in a CIP application obvious.  If the CIP’s claim extends even slightly past what a parent application disclosed more than a year earlier, the parent can be used as prior art against the CIP claim.  See, e.g., In re Chu, 66 F.3d 292, 296–97 (Fed. Cir. 1995) (holding that even though Chu’s “application claims to be a CIP of the Doyle patent,” some claims were not supported by Doyle alone, so for those claims “the Doyle patent was properly relied on as prior art”); In re Van Langenhoven, 458 F.2d 132, 136–37 (C.C.P.A. 1972) (allowing “appellant’s own French patent” to be cited “to establish obviousness” of CIP claims for subject matter beyond the original disclosure, and remarking that “[i]t is of no avail to appellant that the Societe patent is his own”).

In a relatively recent case, Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344 (Fed. Cir. 2012), the Federal Circuit addressed a situation in which a parent application was applied as prior art to render later CIP claims obvious.  At trial, the district court invalidated several Santarus CIP claims for minimum serum concentrations disclosed in the CIP and not in the parent patent.  The court found that the claims were not entitled to the parent’s priority date and held that they were obvious in light of the parent patent.  Santarus did not appeal the issue regarding the claims’ priority date, and the Federal Circuit panel majority affirmed the district court’s decision invalidating the claims.  See id. at 1352.  

In dissent, Judge Newman argued that a parent patent cannot be used as a prior art reference to a CIP patent claim.  Judge Newman focused on the content common to both applications instead of the new matter included in the claim; her reasoning would protect CIP claims from ever having their parent applications cited against them.  The majority of the Federal Circuit, however, has not followed that approach.  Priority does not belong to individual limitations within a claim.  The settled approach is that a CIP claim that is not supported by its parent application is not entitled to the priority date of the parent application, even for subject matter originally disclosed in the parent application.  See Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561, 1564 (Fed. Cir. 1997) (holding that an applicant must “meet the disclosure requirement of [35 U.S.C.] § 112, ¶ 1 in a single parent application in order to obtain an earlier filing date for individual claims”).

Practice Tips

A patent applicant can reduce risks associated with CIP applications by filing a CIP within a short time after the original disclosure (whether the disclosure was in the parent application or by public use, for example) and within a year of the original disclosure.  Ideally, if an invention has not been disclosed publicly outside the filed parent application, a CIP can be filed before the parent application is published.  Although intervening prior art can still be cited against CIP application claims, the original disclosure will not be available as prior art.  

In most cases, however, filing a continuation application based on the original disclosure or a new application with invention disclosures that are not obvious over the original disclosure will be a better strategy than filing a CIP application.  For example, if an applicant is interested in filing applications outside the United States, a CIP application may create issues that should be discussed with a patent professional.  

Conclusion

A continuation-in-part application may appear to be an attractive option but can lead an unwary applicant into such predicaments as a shortened patent term, lost priority and even obviousness over the applicant’s own patent applications.  An experienced Perkins Coie patent attorney can advise on whether to file a CIP application and can help clients protect their intellectual property and avoid potential pitfalls.

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