What Is a Continuation in Part Patent Application?

A continuation in part application is a special type of patent application. Patent practice is complicated and subject to many considerations about past disclosures and uses of the subject matter as well as future handling of the application. This explanation is a brief description of what a continuation in part application generally is in comparison to other patent applications, and does not constitute legal advice. Please seek the guidance of a registered patent attorney if you are considering filing one of these or any patent application.

A continuation in part application follows on from a previously-filed case and creates a chain of cases from a senior, or parent, patent application with a child patent application. The child application possesses a link in subject matter with the parent application; some aspect of the invention or embodiments of the invention are common to both applications. A continuation in part application can be useful when you’ve made improvements to an existing invention that are so closely related that it would be desirable to place the new material in an application together with the old material, but the improvement are different enough that they were not realized and disclosed at the time of the parent application filing.

A continuation in part application carries old subject matter over from a parent patent application and then adds new subject matter that was not contained within the parent. Because the new matter was not contained in the parent application, that new matter does not get the benefit of the parent’s filing date, and so the claims of the new case can have different filing dates from that of the parent application. If claims in the child case are supported by the disclosure made in the parent application, then they will be given the filing date of the parent application; if there are claims which are supported only by the new subject matter, they will receive the new application’s actual date of filing.

The life of a patent was once measured from the grant date of the patent. When that was the case, by filing a continuation in part application, you could potentially increase the protected lifespan of the inventive subject matter. However, the law was changed so that patent protection now runs for twenty years from the effective filing date, which can be that of the parent application or even earlier. Child applications adopt the filing date of the earlier-filed application, and thus generally lose a few of those twenty years during prosecution of the prior case.

Continuation in part applications include include two types of claims: those that include subject matter disclosed completely in the prior application, and those that include subject matter supported by the new disclosure. The former claims receive the benefit of the earlier application’s filing date, while the latter claims get their own, new filing date. This split in filing dates can create issues that may direct an inventor to file an original application instead.

Filing a continuation in part application can be a very wise move if the claims are supported by the old disclosure. It can help you avoid intervening prior art by giving your new application an earlier filing date. However, if the application is filed and the claims aren’t supported by the old disclosure but only by the new disclosure, it makes no sense; the earlier application’s filing date is not available, but the life of the newly-filed application may still be shortened. In this case, these applications should probably be filed as original applications so as to begin with a fresh filing date. So, if there is new disclosure on which the claims are based, it can make more sense to file the claims in an original application rather than a continuation in part application.

Is a Patent Attorney Required for Filing a Patent Application?

Overview: The inventors frequently ask the question “Is a patent attorney required for filing a patent application”. The inventor thinks that he himself is capable for filing the registration. It is a costly misconception. The registration of the patent is a very complex matter. The registration requires a thorough legal knowledge about the international and national patent act. It is not possible for an inventor to know the tidbits of the law. Therefore, I recommend that the inventor should appoint an attorney for registration.

Qualification of a patent attorney: The patent attorneys possess both the technical and legal knowledge to represent the patentee. According to “Indian Patent Act-1970″, a lawyer who has a basic degree in science, engineering and medical and passed the patent agent examination is eligible to qualify as a patent lawyer. The lawyer has to take a professional training from a recognized Institute for appearing in the patent agent examination. After passing the examination, the lawyer gets an agent code. The names of all the qualified agents are included in a register. When a patent lawyer submits the application, he has to quote the agent code.

Duties and obligations of patent attorney: The agents whose names have been included in the register, they are entitled to do the following jobs under the “Indian Patent Act-1970″.

The lawyer has to Prepare, draft and processes the applications in connections with the case and will proceed before controller.
Prepare prosecution papers on the related issues.
Handle issues relating to business units.
Develop and design strategies for products or projects developed.
Resolve and troubleshoot litigation issues.
Maintain and manage accountability to R&D efforts, licensing and other issues.
Negotiate and communicate on patent issues with clients and business units.
Maintain a database of clients’ issues and update periodically.
Provide counsel to clients on patent matters.
Ensure compliance of laws, state and federal laws relating to the issues.

Conclusion: There is a big difference between an invention and describing an invention. A registration is an elaborate description of invention. However, money may be a barrier to the inventor. Mind it, the cost of filing an application through a lawyer is negligible in comparison to the money required for manufacturing and marketing the invention. My suggestion is that you should explore the monetization of your invention. If you can convince the lawyer about the marketability of your invention, the lawyer can help you to overcome the monetary problem. An inventor should not shatter his lifetime dream thinking that he can do a better job than a trained professional.

Help for Inventors

It’s not what you know, it’s who you know as well.

Back in 1999, I approached my father about harnessing energy on my bicycle. Obviously we already knew about dynamos which were popular in the 1970′s but my dad was to come up with something better. The design he thought of has since become manufactured but unfortunately someone else came up with the right people to fund the patent.

Basically it would’ve cost £600 to pay an agent to submit a patent for us but we just didn’t have it and weren’t prepared to gamble on something that might already be protected. In hindsight we should’ve done the following:

· Firstly, make a prototype – which we did.

· Secondly, make a video – which we did.

The next two points are very important. Unless you have money to pay a patent agent then do the following:

· Apply for patent pending on your device, adding as much detail about your invention as possible.

· Secondly, once receipt of the patent pending is received, publicise your device as much as possible. This could be done via YouTube, emails, letters and a website. Once an idea is in the public domain, no one else can patent it for themselves and you still have 12 months from filing your patent pending to apply for a full patent.

This will hopefully have investors competing with each other to take your idea on knowing full well that they can only acquire patent rights through you. If no one takes up the patent within the pending 12 months, then anyone can make the device as no one will own patent rights to it.

We videoed my dad’s invention in 2000 and didn’t publicise it. Nine years later another company patented it and is selling the device. However, I have belatedly published our video on You Tube just after applying for patent pending, just in case my dad’s idea is different enough to be granted its own patent. We’ve also taken advantage of free blogs to publicise. Again, any publicity for this device is purely to get people interested in taking up any patent rights that may be available to it. If no one comes forward or if people think it’s to similar to the idea patented in 2009, then the blogs & video will remain in cyberspace forever as a tribute to my late father.

We did eventually gain rights to another device. We were granted a US Patented Design and UK Registered Design. A UK Registered Design only costs £60 and protects the appearance of the invention. This is good to know, especially when working to a budget but only protects its appearance.We acquired the rights to a lockable portable ground anchor.

Thanks for your time and happy inventing.

Where tens of thousands of music festival goers are gathered together, there will almost always be a minority who want to exploit the communal vibes by nicking your tent and everything else inside it. Thwart the tea-leaves with Safeground, a magnificent device which padlocks your tent to the ground, leaving it immovable by bare hands (unless you’ve got the key that is).