What are the benefits and drawbacks of filing a continuation-in-part application?

Filing a continuation-in-part (CIP) application has several benefits and potential drawbacks:

Benefits:

• Allows addition of new subject matter to an existing invention
• Maintains the priority date of the original application for common subject matter
• Provides an opportunity to strengthen the patent application with new data or improvements
• Allows for changes in inventorship to reflect new contributions

Drawbacks:

• New subject matter only gets the filing date of the CIP, potentially exposing it to more prior art
• Can complicate the patent term calculation
• May result in multiple patents with overlapping subject matter, requiring terminal disclaimers
• Increases overall costs due to additional filing and prosecution fees

The MPEP notes: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Inventors and patent attorneys should carefully consider these factors when deciding whether to file a CIP or a new application.

For more information on new subject matter, visit: new subject matter.

For more information on patent strategy, visit: patent strategy.