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Do provisional rights reach continuation claims, and what do other offices offer instead?

Updated Oct 23, 2026

Short answer

Rarely. Under 35 U.S.C. 154(d), pre-issue royalties need issued claims “substantially identical” to the published claims, and actual notice of the published application (Rosebud v. Adobe, Fed. Cir. 2016). Claims redrafted in a continuation to read on a product usually were not in the published claims. Outside the US, the equivalent tool is the divisional, and each office sets its own window.

What are provisional rights?

A pending US application has no enforceable claims. Section 154(d) gives one exception. Once the patent issues, the owner may obtain “a reasonable royalty” for the period from publication of the application to issue (35 U.S.C. 154(d)(1)).

Two conditions apply, and both are strict:

  • Substantially identical claims. The right is unavailable “unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application” (§154(d)(2)).
  • Actual notice. The party charged must have “had actual notice of the published patent application” (§154(d)(1)).

The suit must be brought within 6 years after the patent issues (§154(d)(3)).

What counts as actual notice?

Rosebud LMS Inc. v. Adobe Systems Inc., 812 F.3d 1070 (Fed. Cir. 2016), held that actual notice means actual knowledge. The applicant does not have to do anything to give notice, but constructive knowledge is not enough.

Adobe knew of Rosebud’s grandparent patent, which shared the same specification. The court held that was legally insufficient and affirmed summary judgment of no pre-issuance damages. As the court put it:

“[T]he notice requirement is not limited to the specification. The alleged infringer must also have notice of the claims of the published patent application and the fact that the applicant is seeking a patent covering those claims.”

Rosebud does not interpret “substantially identical” itself. It relies on §154(d)(2) to explain why notice must reach the claims.

Why do continuation claims aimed at a product rarely earn them?

Provisional rights follow the claims that were published, not the specification. Take a typical case. A competitor launches after the parent published, and the owner files a continuation with new claims drafted to read on the product.

  • The parent’s publication usually does not help. The new claims were not in the parent’s published claims, so the issued claims are unlikely to be substantially identical to them.
  • The continuation’s own publication may help, narrowly. If it is published with the claims that later issue, and the competitor has actual notice of that publication and its claims, a separate period can run from that publication to issue.

This is not a reason to avoid the continuation. Its value is the issued claims and the parent’s filing date. Treat pre-issue royalties as a possible extra, for review by your registered patent practitioner. For the filing window itself, see the continuation deadline.

US families only

Patentative reviews pending US families. The table below is high-level background, not a substitute for local counsel in each jurisdiction.

Can you file a continuation outside the US?

The US continuation, with its fresh claims on the same specification, has no exact equivalent abroad. The nearest tool is the divisional application, which keeps the parent’s filing date. What differs is when you can still file one.

When a divisional (or US continuation) can still be filed, by office. Checked Oct 23, 2026.

United States

Tool
Continuation, divisional or CIP
When it can be filed
Before the parent is patented or abandoned. Filing on the issue date counts. MPEP 211.01(b)
Filing date it gets
The parent’s, for claims the parent supports. 35 U.S.C. 120

European Patent Office

Tool
European divisional application
When it can be filed
While the earlier application is pending: up to, but not on, the date the European Patent Bulletin mentions the grant. After a refusal, until the appeal period ends and during an appeal. Rule 36(1) EPC; Guidelines A-IV, 1.1.1
Filing date it gets
The earlier application’s date and priority, if it stays within the earlier application as filed. Art. 76(1) EPC

Japan (JPO)

Tool
Division of a patent application
When it can be filed
Three windows: (i) whenever amendments are allowed; (ii) within 30 days of service of the examiner’s decision to grant (some grants after appeal are excluded); (iii) within 3 months of service of the first decision of refusal. Patent Act Art. 44(1)
Filing date it gets
Deemed filed when the original was filed. Art. 44(2)

China (CNIPA)

Tool
Divisional application (分案申请)
When it can be filed
Before the 2-month period to complete registration formalities after the notice of grant expires. Not once the application is rejected, withdrawn or deemed withdrawn. Implementing Regs. r. 48, 60(1)
Filing date it gets
Keeps the original filing and priority dates, if it does not go beyond the original’s disclosure. r. 49(1)

Practical reading. At the EPO, the window stays open while the parent is pending, so it works much like the US one. In Japan, the windows are tied to amendment periods and to service of the grant or refusal decision. In China, a pending application is not enough: the divisional must come before the registration period after the notice of grant ends. Chinese divisionals also apply where an application contains two or more inventions, and may not change the application’s type (r. 48).

Fees, extensions and late-filing remedies differ by office and are left out here. For the US filing types, see continuation vs CIP vs divisional.

Informational only, not legal advice. Have a registered patent practitioner review before filing.

Questions about provisional rights and foreign divisionals

What are provisional rights under 35 U.S.C. 154(d)?

A right to a reasonable royalty from anyone who makes, uses, sells, offers or imports the invention as claimed in a published US application, for the period from publication to issue. It applies only if the issued claims are substantially identical to the published claims and that party had actual notice of the published application.

What counts as actual notice?

Actual knowledge of the published application and its claims. In Rosebud LMS v. Adobe (Fed. Cir. 2016), the applicant did not need to send a notice, but constructive knowledge was not enough, and knowing about a related patent with the same specification did not count.

Do claims added in a continuation earn provisional rights?

Not from the parent’s publication, unless they are substantially identical to claims the parent published with. Claims written later to read on a product usually are not. If the continuation is itself published, its own published claims can start a separate period, subject to the same two conditions.

Does Europe have continuations?

Not as a separate filing type. The EPO’s equivalent is the divisional application, which may be filed for any pending earlier European application (Rule 36(1) EPC). It may not extend beyond the earlier application as filed and keeps its filing and priority dates (Art. 76(1) EPC).

Does Patentative review non-US applications?

No. Patentative reviews US families only. For EPO, Japanese or Chinese divisional strategy, ask a practitioner qualified in that jurisdiction.

A competitor launched. Could a US continuation still reach it?

Send a pending US application number and a link to the product. We check whether the as-filed specification may support claims covering it, cite the paragraphs, and confirm the last day to file. The first reviews are free.

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