What are the benefits and drawbacks of filing a continuation-in-part application?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
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.