Divisional or Continuation Patent Application: Understanding Your Options for Patents

When it comes to patent applications, inventors have several options to extend the protection of their innovations. Two common types are divisional patent applications and continuation patent applications. Both are vital strategies for expanding the scope of your patent rights, but they have distinct differences and serve different purposes. Understanding how to leverage these options can help you protect your intellectual property effectively.

What is a Divisional Patent Application?

A divisional patent application is filed when an original patent application (called the “parent application”) contains more than one invention. The United States Patent and Trademark Office (USPTO) often issues a “restriction requirement” that forces the applicant to separate the inventions into different applications. This is where a divisional application comes into play.

A divisional application allows an inventor to pursue additional claims that were originally disclosed but not allowed in the parent application. The divisional patent will share the same filing date as the parent application, which is critical for establishing the novelty and/or obviousness of a particular invention relative to other art.

Example: Imagine you’ve invented a device that includes both a new type of engine and a unique safety mechanism. The USPTO might require you to choose to continue with one invention and file a separate application for the invention not chosen. The safety mechanism, in this case, would be filed under a divisional application.

What is a Continuation Patent Application?

A continuation patent application is filed when an applicant wants to pursue additional claims on the same invention that were not included in the original patent application. A continuation allows the applicant to add new claims without changing the original disclosure of the invention.

The continuation retains the original filing date, which can be particularly valuable when dealing with competitors who may have developed similar technology. This approach is often used when the inventor wants to broaden the scope of the claims in the patent, giving the patent more comprehensive protection.

divisional and continuation patent applications

Key Differences Between Divisional and Continuation Patent Applications

While both divisional and continuation applications arise from a parent patent application, there are some crucial differences:

  1. Purpose:

    • A divisional application is filed due to a restriction requirement by the USPTO when multiple inventions are disclosed in a single application.
    • A continuation application is filed when the applicant wants to broaden or add claims to the same invention.

  2. Claims:

    • Divisional applications must focus on a separate invention that was originally disclosed but not examined.
    • Continuation applications allow the inventor to pursue additional claims on the same invention.

  3. Scope:

    • A divisional application offers protection for distinct inventions.
    • A continuation application broadens or expands claims related to the same invention in the parent application.

Why File a Divisional or Continuation Patent Application?

Filing a divisional or continuation patent application is an essential strategy for securing comprehensive protection for your intellectual property. Here are a few reasons to consider these applications:

  • Maximize Protection: Divisional and continuation applications allow inventors to fully protect all aspects of their invention/s, ensuring competitors can’t exploit loopholes.
  • Handle Restriction Requirements: Divisional applications help comply with USPTO requirements when multiple inventions are included in a single application.
  • Keep Competitors at Bay: Both divisional and continuation applications provide a powerful tool to broaden your patent rights, making it more difficult for competitors to design around your invention.

The USPTO Process for Divisional and Continuation Patent Applications

Filing a divisional or continuation patent application follows the same general process as a regular patent application with the USPTO. Here’s a breakdown of the steps:

  1. Initial Filing: The inventor files the parent application. During the examination process, the USPTO may issue a restriction requirement if the application contains more than one invention.
  2. Filing a Divisional: If the USPTO requires restriction, the inventor can file a divisional application for the separate invention not chosen in the parent application. This divisional application must be filed before the parent application is granted or abandoned.
  3. Filing a Continuation: If the inventor wants to add or broaden claims, they file a continuation application before the parent application is granted or abandoned.
  4. Examination: The USPTO examines both the divisional and continuation applications separately, and if approved, grants separate patents.

Each application retains the original filing date of the parent patent, which is critical for establishing the novelty and/or obviousness of a particular invention relative to other art, maintaining priority date, and protecting your intellectual property from competing inventions.

Cost Considerations for Divisional and Continuation Patent Applications

Filing a divisional or continuation patent application incurs additional costs. These costs can vary depending on the complexity of the invention and the number of claims filed. Here’s a brief breakdown of the typical costs:

  • USPTO Filing Fees: The fees for filing a divisional or continuation application with the USPTO are similar to those for a regular patent application. These can range from $400 to $800 (not including Request For Prioritized Examination), depending on the type of application and the entity size.
  • Legal Fees: Working with a patent attorney can also add to the cost, but it ensures that your application is comprehensive and accurately reflects your invention.
  • Maintenance Fees: Once granted, each patent (including divisional and continuation patents) requires maintenance fees to keep them active.

For more details on patent costs, visit our Patent Pricing page.

Is a Divisional or Continuation Patent Application Right for You?

Whether you’re dealing with multiple inventions or want to broaden the scope of your existing patent claims, filing a divisional or continuation patent application is an effective way to maximize the protection of your intellectual property. These applications help ensure that your innovations are fully covered, keeping competitors at bay while allowing your business to grow.

If you’re unsure whether a divisional or continuation application is right for you, consult with a patent attorney to discuss your options. Innovent Law can guide you through the process, providing expert advice and support at every step.