Jeff Wendt

In Part I of this five-part series, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. In Parts III and IV we discussed various implications of the types of subsequent applicants. And now, in Part V, we provide practice tips drawn from the case law cited in this series, as well as derived from omphaloskepsis.

In Part I of this series, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. Part III discussed some of the implications of these for prosecution and litigation, and Part IV will examine some further implications. In the fifth and final installment in this series, we will distill all of the information covered to provide concrete practice tips for practitioners.

In Part I, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. Part III will discuss some of the implications of these. When an applicant seeks to add new claims pursuant to a continuation or divisional application, U.S. Patent Law explicitly requires that the original specification provide adequate support for the new claims by the original specification satisfying the Section 112(a) written description and enablement requirements for the new claims. 35 U.S.C. § 120. The same is also true for continuation-in-part (CIP) applications claiming overlapping subject matter but not for claims comprising “new matter” because the new matter claimed must find support in additional disclosure, i.e., in material added to the CIP application itself.

In Part I of this five-part guide to U.S. subsequent patent applications, the authors reviewed the law governing such applications. In Part II, we review the different types of subsequent applications. A continuing patent application is “an application filed subsequently to another application, while the prior application is pending, disclosing all or a substantial part of the subject-matter of the prior application and containing claims to subject-matter common to both applications, both applications being filed by the same inventor or his legal representative.” In re Febrey, 135 F.2d 751, 757 (CCPA 1943) (internal quotation marks and citation omitted). A continuation application is “a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented.”

Patent practitioners (hopefully) know that there are many types of patent applications and, at times, have filed a continuation, continuation-in-part, or divisional application. “Continuation practice” was the once commonly used phrase to describe subsequent U.S. patent applications, which also used to include file wrapper continuations (FWC), now replaced by the more modern request for continued examination (RCE). These types of subsequent patent applications can be used strategically to build a portfolio of patents for a client for a given subject matter. See, e.g., the patents asserted in WesternGeco LLC v. ION Geophysical Corp., 585 U.S. ___, 138 S.Ct. 2129 (2018). However, many patent practitioners are not fully aware of the implications of each such subsequent application, either for prosecution or for litigation. This five-part series will review these types of applications and their implications and ultimately provide some relevant practice tips.