What are parent and child applications?
In the patent world, parent and child applications may be relevant when continuing applications are involved. A parent application is typically the first or prior nonprovisional patent application filed for an invention. A parent application may disclose multiple embodiments.
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If you are the proud owner of a utility patent application that has recently been allowed, filing a child application before your parent patent is granted will give you flexibility to pursue competitors. In particular, you can use a child application to cover competitive products attempting to design around your parent patent.
Why keep pendency alive?
Pendency refers to the pending status of a patent application. In particular, it commonly refers to a patent application that has not yet been granted or abandoned. If a patent application is about to issue, patent pendency will soon expire unless you timely file a child application.
A child patent application is filed while a parent application is still pending (i.e., not issued or abandoned). By linking a child to a parent through a priority claim, the child application benefits from the earlier priority date of the parent application.
So why file a child application when you already have a patent about to be granted?
Why should you care about parent and child applications?
As the patent owner, you should be aware of attempts by competitors to design around the claims of your soon-to-be issued patent. Filing a child application gives you further opportunities to pursue more claims that may capture your competitors’ products, both now and in the future.
If you are a competitor trying to avoid patent infringement, you should carefully consider whether the patent owner has any pending child applications. Even if you determine that you do not infringe the parent patent, it possible that child applications may result in different claims that will one day cover your product.
What are the different types of child applications?
Also known as continuing applications, the various types of child applications include:
- continuation application – no new disclosure, just different and/or new claims finding support in the parent;
- divisional application – no new disclosure, just different claims finding support in the parent;
- continuation-in-part (CIP) application – new disclosure, and new claims finding support in the parent and/or the CIP.
Continuing applications typically contain the same disclosure as the parent (i.e., written description and figures), but different claims. A CIP contains new matter not disclosed in the parent app, leading to different priority dates: 1) an earlier priority date for subject matter disclosed in a parent app; and 2) the subsequent CIP filing date serving as the priority date for the additional disclosures contained therein.
What is a divisional application?
While a divisional and continuation are practically the same, a “divisional” technically refers to a child application containing original claims that were not elected in the parent patent.
For example, a common scenario may involve a parent application that originally included both apparatus and method claims. In response to a Restriction Requirement where the patent examiner requires the applicant to pick one or the other, the applicant may elect apparatus claims in the parent, for example, and then file a divisional to pursue the non-elected method claims.
How can an applicant make strategic use of parent and child patent applications?
Continuations can also play a significant role in a well-planned patent enforcement strategy. If a parent has been allowed, an applicant may want to consider filing a continuation application prior to the grant of the parent patent in order to capture attempts by competitors to design around the parent patent claims.
For example, if a parent patent issues with an independent claim covering ABC and a competitor introduces a new product with only AB (no C), filing a continuation with claims covering only AB (assuming such a claim is allowable over the prior art and supported by the specification) gives the patent owner a second bite at the apple to capture the design-around attempts.
Child patent applications keep pendency alive as insurance against future infringers
Even a strong patent with well drafted claims may be susceptible to design-arounds. Once competitors analyze and pick apart the patent claims, there’s no predicting how they might be able engineer around the claims to avoid infringement.
While it may be unclear how third parties will design around allowed claims, filing a continuation application with a placeholder claim gives the patent owner time to see how the competition reacts to the granted patent. The patent owner may then file a preliminary amendment to replace the placeholder claims with new claims that more effectively capture any design-around products.
