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Improvements: New Application or CIP

Posted Monday, June 16, 2008 by Jim Ruttler

Once a non-provisional patent application is filed and docketed for examination, what is the proper course of action to protect an improvement that is not contained in the application? There are two options: file a new unrelated application that contains the improvement or file a continuation-in-part (CIP) related application.

A CIP application is the traditional route because it is specifically designed for accommodating improvements to an invention already contained in a previous non-provisional application. The downside to a CIP application is that the patent term runs from the filing date of the previous non-provisional application. Historically, this was not an issue because the patent term was measured from the issuance date. However, the patent term now runs from the filing date thereby resulting in a truncated patent term for any improvements contained in a CIP application.

Differently, filing a new and unrelated provisional or non-provisional application restarts the patent term. While it would seem like this would be an obvious choice over a CIP application, it has a number of hidden risks. First, the previously filed application can be cited against the newly filed application during examination because of the previous filing date and similar disclosure. There is a way around this rejection by filing a terminal disclaimer, but it requires truncating the patent term of the newly filed patent application to end at the expiration of the previously filed application. This is the same result as filing the CIP application. Second, public uses, offers for sale, and publications of the subject matter contained in the previously filed application can be cited against the newly filed application or be used to invalidate any patent issued on the newly filed application. This type of rejection cannot be overcome by filing a terminal disclaimer and could result in complete loss of patent rights to the improvements. Third, other patent applications filed before the newly filed application and containing subject matter similar to that in the previous patent application can be cited as a basis for rejection during examination. Because the newly filed application is unrelated to the previously filed application, it would not benefit from the earlier filing date of the previously filed application and could not use that as a basis for circumventing the rejection.

In short, the issues surrounding improvements are complicated. Despite the truncated patent term of a CIP application, the benefit of the earlier filing date should be carefully considered against the risks of filing a new and unrelated patent application.

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