Continuation vs CIP vs divisional: what is the difference?

A continuation is “an application for the invention(s) disclosed in a prior-filed copending” application. Its disclosure “must not include any subject matter which would constitute new matter” in the parent (MPEP 201.07). It must name at least one inventor from the parent and claim the parent’s benefit.

The MPEP describes its purpose plainly: to “introduce into the application a new set of claims and to establish a right to further examination.” The specification stays the same. The claims change.

Each claim the parent supports under §112(a) gets the parent’s filing date (MPEP 211.05). There is no §121 protection, so a claim that is an obvious variant of a family patent may draw a nonstatutory double patenting rejection. A terminal disclaimer overcomes it (MPEP 804.02).

A CIP repeats “some substantial portion or all of the prior-filed application” and adds “matter not disclosed in the prior-filed application” (MPEP 201.08). It is the only continuing application that may add new matter.

The effective date is decided claim by claim (MPEP 211.05):

• A claim directed solely to subject matter the parent adequately discloses gets the parent’s date.
• A claim that recites a feature first introduced or first adequately supported in the CIP is “entitled only to the filing date of the continuation-in-part application.”

The term is still measured from the earliest referenced application, so new matter in a CIP gets a later date but no extra term (35 U.S.C. 154(a)(2)). A CIP gets no §121 safe harbor, even after a restriction (Pfizer v. Teva, Fed. Cir. 2008, cited in MPEP 804.01).

A divisional is a later application “for an independent or distinct invention, carved out of” the parent, “disclosing and claiming only subject matter disclosed in the earlier or parent application” (MPEP 201.06). It is often filed after the examiner requires restriction.

Section 121 gives it two things. A divisional that meets §120 gets the parent’s filing date. And a patent from the restricted application “shall not be used as a reference” against the divisional, if the divisional is “filed before the issuance of the patent on the other application” (35 U.S.C. 121).

That safe harbor is narrow. Per MPEP 804.01, it does not apply when:

• the applicant filed the divisional voluntarily, without a restriction requirement;
• the divisional’s claims are no longer consonant with the line the examiner drew;
• the restriction was withdrawn before the patent issued.

A restriction in the parent also does not carry over to a continuation unless the examiner reinstates it (MPEP 804.01).

• Co-pendency. Each must be filed “before the patenting or abandonment of or termination of proceedings on” the parent (35 U.S.C. 120). Filing on the issue date counts (MPEP 211.01(b)).
• A specific reference to the parent in the application data sheet, naming the relationship: continuation, divisional or CIP (37 CFR 1.78(d)(2), quoted in MPEP 201.07).
• A common inventor with the parent (35 U.S.C. 120).
• The continuing application fee ($2,700 / $4,000). The tiers do not stack, and if the fee is unpaid the benefit claim is not entered (37 CFR 1.17(w); CAF Guide Q10, Q12). Provisional and foreign priority dates do not count. See how the surcharge is counted.

Usually a continuation. If the pending specification already describes what the product does, a continuation can present claims to it. Supported claims keep the parent’s filing date, which typically predates the launch. The Federal Circuit has said it is not improper “to amend or insert claims intended to cover a competitor’s product” (Kingsdown v. Hollister, Fed. Cir. 1988).

A CIP usually does not help here. Claims the parent already supports keep the parent’s date in a CIP too, but a continuation does that without new matter. Matter added to describe the product would date from the CIP filing, which is after the launch. MPEP 211.05 notes that where claims entitled only to the CIP date read on subject matter already published, used or sold, a §102 rejection is proper. The product on the market may be that prior art.

A divisional fits one case: the product matches an invention the examiner restricted out. The divisional keeps the parent’s date and the §121 protection, as long as its claims stay consonant with the restriction.

Either way, support decides it. Written description is “particularly important” when claims are added later “in response to development by others” (Quake v. Lo, Fed. Cir. 2019). For the full method, see continuation strategy for competitor products.

A request for continued examination keeps prosecuting the same application. “An RCE is not the filing of a new application” (MPEP 706.07(h)). It must be filed before the issue fee is paid (unless a 1.313 petition is granted) or the application is abandoned. It cannot switch to a distinct invention. The fee is $1,500 for the first RCE and $2,860 after that (large entity; fee schedule).

Use an RCE to keep arguing the same claims after a final rejection, or to have new references considered. Use a continuation to pursue different claims while the parent issues. A continuation also keeps the family pending, which is what preserves the option to claim a product launched later. See the continuation deadline.