Continuations and Divisionals
June 2013
Michael D. Stein
Principal
Stein IP LLC
1400 Eye Street, NW
Suite 300
Washington, DC
20005
(202) 216-9505
www.steinip.com
mstein@steinip.com
Table of Contents
The Statutes ...............................................................................................................
Pre vs. Post-AIA Differences ..................................................................................
Continuations and Divisionals .....................................................................................
Differences ............................................................................................................
Common Aspects ...................................................................................................
Practical Difference ................................................................................................
Strategies When Considering Whether to File ............................................................
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2
6
8
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11
12
13
35 USC 120 (Pre-AIA)

35 U.S.C. 120 (pre-AIA) Benefit of earlier filing date in the United States.

An application for patent for an invention disclosed in the manner provided by section 112(a)
(other than the requirement to disclose the best mode) in an application previously filed in
the United States, or as provided by section 363, which is filed by an inventor or inventors
named in the previously filed application shall have the same effect, as to such invention, as
though filed on the date of the prior application, if filed before the patenting or abandonment
of or termination of proceedings on the first application or on an application similarly entitled
to the benefit of the filing date of the first application and if it contains or is amended to
contain a specific reference to the earlier filed application. No application shall be entitled to
the benefit of an earlier filed application under this section unless an amendment containing
the specific reference to the earlier filed application is submitted at such time during the
pendency of the application as required by the Director. The Director may consider the failure
to submit such an amendment within that time period as a waiver of any benefit under this
section. The Director may establish procedures, including the payment of a surcharge, to
accept an unintentionally delayed submission of an amendment under this section.
2
35 USC 120 (Post-AIA)

35 U.S.C. 120 Benefit of earlier filing date in the United States.

An application for patent for an invention disclosed in the manner provided by section 112(a)
(other than the requirement to disclose the best mode) in an application previously filed in
the United States, or as provided by section 363 which names an inventor or joint inventor in
the previously filed application shall have the same effect, as to such invention, as though filed
on the date of the prior application, if filed before the patenting or abandonment of or
termination of proceedings on the first application or on an application similarly entitled to
the benefit of the filing date of the first application and if it contains or is amended to contain
a specific reference to the earlier filed application. No application shall be entitled to the
benefit of an earlier filed application under this section unless an amendment containing the
specific reference to the earlier filed application is submitted at such time during the
pendency of the application as required by the Director. The Director may consider the failure
to submit such an amendment within that time period as a waiver of any benefit under this
section. The Director may establish procedures, including the payment of a surcharge, to
accept an unintentionally delayed submission of an amendment under this section.
3
35 USC 121 (Pre-AIA)

35 U.S.C. 121 (pre-AIA) Divisional applications.

If two or more independent and distinct inventions are claimed in one application, the
Director may require the application to be restricted to one of the inventions. If the other
invention is made the subject of a divisional application which complies with the requirements
of section 120 of this title it shall be entitled to the benefit of the filing date of the original
application. A patent issuing on an application with respect to which a requirement for
restriction under this section has been made, or on an application filed as a result of such a
requirement, shall not be used as a reference either in the Patent and Trademark Office or in
the courts against a divisional application or against the original application or any patent
issued on either of them, if the divisional application is filed before the issuance of the patent
on the other application. If a divisional application is directed solely to subject matter
described and claimed in the original application as filed, the Director may dispense with
signing and execution by the inventor. The validity of a patent shall not be questioned for
failure of the Director to require the application to be restricted to one invention.
4
35 USC 121 (Post-AIA)

35 U.S.C. 121 Divisional applications.

If two or more independent and distinct inventions are claimed in one application, the
Director may require the application to be restricted to one of the inventions. If the other
invention is made the subject of a divisional application which complies with the requirements
of section 120 it shall be entitled to the benefit of the filing date of the original application. A
patent issuing on an application with respect to which a requirement for restriction under this
section has been made, or on an application filed as a result of such a requirement, shall not
be used as a reference either in the Patent and Trademark Office or in the courts against a
divisional application or against the original application or any patent issued on either of them,
if the divisional application is filed before the issuance of the patent on the other application.
The validity of a patent shall not be questioned for failure of the Director to require the
application to be restricted to one invention.
5
Pre vs. Post-AIA Differences

For continuation/divisional applications, new declarations
required if parent is a Pre-AIA application with old declaration

No new declarations required if parent is a Post-AIA
application with new declaration

A copy of a power of attorney may not be used if a new
applicant is being named in a continuing application, e.g., in the
prior application the power of attorney was given by the
inventors and the continuing application is filed by a juristic
entity
6
Pre vs. Post-AIA Differences
Continuation

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
7
Application with the same or similar specification as a
parent application, where the continuation contains claims
directed to a same invention as the parent, but have different
scope
Voluntary in that USPTO does not have procedure to force
an applicant to file continuation
Differences Between Continuations and
Divisionals
Divisional

8

Application with the same or similar specification as a parent application, where
the divisional contains claims directed to a different invention as the parent, and
have different scope

Often involuntary in the way that a divisional is often result of restriction
requirement issued by USPTO Examiner asserting claims to different inventions

Applicant can also voluntarily file divisional

By different invention, that can mean claims directed to a device vs. claims
directed to a method, or claims directed to different species, or claims directed
to different aspects of an overall invention
Differences Between Continuations and
Divisionals
With restriction requirement, it is possible to attempt to traverse
requirement, but still must make an election between the choices provided
by Examiner
Or one can simply make the election without traverse and file a divisional
application for each different invention. Depends upon intentions and goals
of applicant
If application is a national stage application, then the Examiner is supposed
to review the claims for “unity of invention”, which is slightly different
standard than US practice, which is whether “two or more independent
and distinct claims are claimed in one invention,” however, in practical
terms, there is often little difference between national stage applications
and non-PCt applications as to whether a restriction requirement is made

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9
Differences Between Continuations and
Divisionals



With restriction requirement, it is possible to attempt to traverse
requirement, but still must make an election between the choices
provided by Examiner
Or one can simply make the election without traverse and file a
divisional application for each different invention. Depends upon
intentions and goals of applicant
If application is a PCT application, then the Examiner is supposed to
review the claims for unity of invention, which is slightly different
standard than US practice, however, in practical terms, there is often
little difference between non-PCT and national stage applications as
to whether a restriction requirement is made
10
Common Aspects of Continuations and
Divisionals

They can only be filed if the parent application has not issued.

They cannot contain new matter that is not supported by the parent
specification

There is no limit to the number of continuations or divisionals that may be
filed. A few years ago, the USPTO attempted to reduce backlog by limited
number of continuations and divisionals, but that attempt failed in view of
strong resistance by stakeholders (applicants) in the patent system
11
Practical Matter of Distinction

As a practical matter, there is no distinction between calling an
application a continuation or divisional.

Each have same basic requirements, although applicant cannot
get double patenting rejection if files divisional based upon
restriction requirement

Never had a case or heard of situation where USPTO or court
complained that applicant called a child application a
continuation instead of divisional or vice versa
12
Strategies When Considering Whether to File
Continuation/Divisional

Obviously, the more continuations/divisionals that are filed, the
higher the cost due to filing fees and usually prosecution fees

Filing a continuation(s)/divisional(s) has advantage of providing
more weapons to use against competitor

Allows applicant to keep some application pending so that
claims can be added/amended years down the road to take
into account competitor’s undiscovered or newly invented
products/methods
13
Strategies When Considering Whether to File
Continuation/Divisional

Keeps competitors guessing as to full scope of claim coverage
if they realize that at least one application still pending

May receive double patenting rejection when filing a
continuation(s) if claims are not patentably distinct, but can file
terminal disclaimer

Other than double patenting, parent, child or sister
applications cannot be used as prior art since they will all
share same priority date
14
Strategies When Considering Whether to File
Continuation/Divisional

Consider filing continuation(s) as late as possible


15
Often occurs just before issuance, and preferably before
payment of issue fee. Can do the same when the
continuation is almost ready to issue. Diffuses costs over
time and stretches out process to see how market develops
Also often occurs when some claims are allowable or
contain patentable subject matter, while others are rejected.
In this way, possible to get a patent on some claims which
can be enforceable or used as threat or for licensing against
others while allowing for further prosecution of rejected
claims in continuation
Strategies When Considering Whether to File
Continuation/Divisional

Consider filing many continuations/divisionals early
on

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16
Enables the likelihood that at least one continuation will be
allowed early in the process
Enables applicant to have multiple patents issue earlier on in
the process
File divisional as pre-emptive strike against Examiner’s possible
restriction requirement, cutting down on overall prosecution
time