Question 1

When is the deadline to file a continuation?

Accepted Answer

A continuation must be filed while the parent is still pending: on or before the day it issues as a patent (35 U.S.C. §120; MPEP 211.01(b)). Paying the issue fee does not close the window; the issue date does.

Question 2

How much is the continuation surcharge?

Accepted Answer

Large entities pay $2,700 for a continuation filed more than 6 years after the earliest benefit date and $4,000 after 9 years (37 CFR 1.17(w)); small and micro entities pay 40% and 20%. Provisional and foreign priority dates don’t count.

Question 3

Is claiming a competitor’s product allowed?

Accepted Answer

Yes, if the specification supports them. The Federal Circuit has said it is not “in any manner improper” to amend or add claims to cover a competitor’s product learned of during prosecution (Kingsdown v. Hollister, 1988). The new claims still need written-description support in the original filing (PIN/NIP v. Platte, 2002).

Question 4

Can you file after the notice of allowance?

Accepted Answer

Yes. The parent stays pending after allowance, and even after the issue fee is paid, until the patent issues. The MPEP calls filing before paying the issue fee best practice, because patents issue shortly after payment.

Your competitor just launched a product. Your pending patent may still be able to claim it.

Who it’s for

Common questions

When is the deadline to file a continuation?

How much is the continuation surcharge?

Is claiming a competitor’s product allowed?

Can you file after the notice of allowance?

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