COLUMN // PATENT
Continuing Patent Applications
A new year meant new fees—a walkthrough of their impacts on continuations and deciding which fees are worth incurring.
Written by Kirk Teska
On January 19, 2025, the U.S. Patent and Trademark Office (USPTO) began charging additional fees for certain “continuing” patent applications: $2,700 for a continuing application filed six to nine years after the initial patent application and $4,000 for a continuing application filed nine or more years after the initial patent application. That’s on top of the original fee of $2,000. So, now a nine-year continuing application costs $6,000 rather than $2,000—a trifold increase.
Continuing patent applications include continuations, divisionals, and continuations-in-part. Let’s look at each of these continuing patent application species in more detail so you can decide whether to incur the new government fees.
CONTINUATIONS
Continuations are usually filed: 1) to change the focus of the claims due to prosecution of the first filed application before the USPTO, 2) due to changes in the patented technology, or 3) to keep an application pending in order to monitor competitors. In order of the above, here are three corresponding examples.
EXAMPLES:
1) Consider a patent application with independent claim 1 for protection covering the combination A, B, and C and dependent claim 2 covering all of claim 1 (A, B, and C) plus D. The alphabetical letters represent functionality, components, and/or substances in an apparatus claim or processing steps in a method claim. For a simple ladder, A could be the lefthand side rail, B could be the righthand side rail, and C could be the rungs between the two rails. The D of claim 2 could state, for example, that the two rails and the rungs are made of aluminum.
Suppose the Patent Office rules against claim 1 but states claim 2 is allowable. To gain an early patent of fair scope, the decision is made to combine claim 2 into claim 1 (the combination of A, B, C, and D) which the USPTO allows. But, broader coverage (for a ladder made of something other than aluminum) is still desired so a continuation application is filed (before the first patent issues) with original claim 1 (A, B, and C).
2) Imagine a ground maneuvering robot with three new functionalities f1, f2, and f3. f1 could be a ground penetrating radar subsystem (to detect buried mines), f2 could be a vision subsystem to detect roadside bombs (improvised explosive devices or IEDs), and f3 could be a rotating and elevating turret for a weapon. Initially, it is thought that functionality f1 is the most important and the claims for protection of the first patent application are thus focused there.
Later, after the robot is used by the military in field trials, it turns out f3 is the most prized functionality. So, a continuation application is filed with claims focused on that functionality.
3) In the third example, the previous robot is a success far greater than anyone would have imagined. Demand is very high, sales are great, and profits are up. That situation, of course, breeds competition. So, a patent strategist decides it’s worth it to keep at least one patent application pending for a while, even though f1 and f3 are now fairly well protected. That way, competitors’ robots can be evaluated and, if need be, adjustments can be made to the pending patent application claims to cover a competitor’s robot. Suppose, for example, that all the issued patent claims so far require right and left driven tracks on the robot for maneuvering the robot, but a competitor’s robot has wheels instead of tracks. The claims of the still pending continuation application could then be adjusted to either eliminate the tracks or replace them with a “robot drive system” to cover the competitor’s wheeled robot
DIVISIONALS
The most common reason for a divisional is a restriction requirement made in a pending patent application by the USPTO.
EXAMPLE:
Suppose one of our robot patent applications has both apparatus claims (e.g., the method of a ground robot chassis, right and left driven tracks for maneuvering the chassis and a rotating and elevating turret on the chassis for a weapon) and also method claims (e.g., the method of driving a robot with a weapon mounted on the turret upstairs inside a building and into a room where enemy combatants are known to be present). The USPTO may require an “election” as between the apparatus and method claims.
In response, a decision is made to elect only the apparatus claims. The method claims are withdrawn. But, before the apparatus claims issue in a patent, a divisional patent application can be filed for the method claims.
As an aside, I like restriction requirements (to a point) because it gives me a chance to see what the USPTO Examiner likes in the elected claims so I can better tailor the unelected claims in a later filed divisional patent application for easier allowance.
CONTINUATION-IN-PART (CIP)
The most common reason for a CIP is the technology changes in some way after the original patent application is filed.
EXAMPLES:
Suppose in our military robot example, engineering decides to add a gunshot detection subsystem to the robot (imagine the weaponized robot detecting a gunshot and its origin and then automatically advancing on that location).
No such technology was described in the original patent application, so a CIP is filed with claims adding the gunshot detection subsystem. The CIP thus has two filing dates: that of the original patent application for what it discloses (functionalities f1, f2, and f3) and that of the CIP for the new stuff it discloses (here the gunshot detection subsystem). So, the “in-part” new stuff had better be novel and unobvious as of the CIP filing date at least when combined with whatever is in the original patent application (often called the “parent” application).
I know gunshot detection subsystems, even on robots, are not new (and neither are the other robotic functionalities used in the examples above), but pretend we are talking about a time in history when they were new.
With a CIP you also now have a pending application to which can be attached additional continuations, divisionals, and/or even CIP patent application filings (sometimes referred to as “children”).
PATENT STRATEGIES
Once a given patent issues, its claims are fixed and a competitor can almost always design around the patent claims. But, with a still pending patent application, adjustments can be made to the claims to capture any attempted competitor design-arounds. So, in order of value, for a given technology, it’s: 1) one or only a few patents protecting the technology (lowest value) followed by 2) several patents followed by 3) numerous patents plus at least one pending patent application (highest value).
Don’t believe me? Look up the number of patents on iRobot’s popular Roomba robotic vacuum cleaner. There are more than 40. And, “other patents pending.”
The beauty of a pending patent application is this: Even if I’m only an average patent attorney, but I know the details of a competitor’s product (and all the prior technology), then I will likely be able to draft new and unobvious patent claims covering the competitor’s product.
So, for important products, I don’t think the new fees are any real concern. Also, the majority of patent applicants don’t file continuations, divisionals, or CIPs nine or more years after the original patent application. And we are talking here about only the government filing fees. The patent attorney’s fees for all continuation patents will most always eclipse the filing fees. Perhaps by many thousands of dollars in some cases.
So, for blockbuster technologies, nothing really changes as the fee increase will probably not thwart a series of continuation patents. For mediocre ideas, there is probably only one or a few patents so again nothing changes. For the in-betweens, the patent strategy can be more interesting. The problem is the timing and when one knows in which category a new invention fits. Hopefully, you’ll know within six to nine years after the original patent application is filed.
Kirk Teska is the managing partner of Iandiorio, Teska and Coleman, LLP, an adjunct professor at Suffolk Law, and the author of two books: Patent Savvy for Managers (NOLO) and Patent Project Management (ASME Press).
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