When must a continuation application be filed?
Known as a child application, a continuation must be filed while the parent application is still pending. A pending patent application is one that has not been abandoned or granted. In some cases, there may be no exact deadline for when a continuation must be filed because the parent application may be pending for a long time. For example, you may be waiting for a first Office Action which can take a couple of years. In other cases, the urgency may be high as the parent application is about to issue.
Timing is critical here. There is no second chance after a patent is granted. You can file a standalone patent application with new matter, but you will not be able to file a continuation after the parent application has been issued. You must maintain pendency of a parent application in order to file child patent applications.
Need to file a patent continuation application? Contact Vic at vlin@icaplaw.com or call (949) 223-9623 to request a flat rate cost estimate for filing your child application.
When should you file a continuation when your patent application is allowed?
A Notice of Allowance sets a 3-month deadline for paying the issue fee. Once the issue fee is paid, your patent will grant in roughly one month. Consider paying the issue fee later to give yourself more time to decide whether or not to file a continuation.
To err on the side of caution, we prefer filing the continuing application before paying the issue fee if possible. Sometimes, you will not have that luxury if the issue fee deadline is rapidly approaching. During those times when an issue fee payment must be made to meet the deadline, consider filing the continuation within one or two weeks of the payment date if possible.
After payment of the issue fee, the USPTO will send an Issue Notification setting forth the exact date on which the patent will be granted, which will always be a Tuesday. Unless it’s a holiday, the Monday before the issue date will typically be the last safe day to file a continuation. Though you don’t want to wait until the last minute, a continuation may be filed on the same day that the parent patent issues.
Is it safe to pay the issue fee before filing a continuing application? It depends. We don’t blame clients for wanting their patents granted as soon as possible. In fact, we typically share that desire to get the patent right away. To minimize risk in those situations, try to get the continuation application filed within one or two weeks of the issue fee payment if possible.
When should you file a continuing application when an Office Action is outstanding?
At times, it may make sense to file a continuing application in addition to, or in lieu of, responding to an Office Action. For example, you may realize that certain features are not shown in the cited prior art references. You would like to claim those features, but they might not be adequately described in your specification. In these situations, you might consider filing a CIP to add those features you wish to claim.
A continuing application may be filed within the 3-month deadline of a substantive Office Action without having to pay extension fees. An extension fee will need to be paid in the parent application if you plan to file a continuing application during the extended period calculated from the Office Action date.
Is it too late to file a continuation application after your patent has been granted?
Yes, it is too late to file a child application if the parent patent has been issued. There is no option for filing a late continuation. Instead, you might consider filing a reissue application which would open the door for filing reissue continuations.
Thinking of filing a continuing application?
Contact US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can quickly file a child continuing application while your parent application is still pending.
