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What Are The Different Types Of Patent Family Members?

What are these: Continuations, Continuations-in-part, Divisionals?

Why do some patents in a family claim different priorities? Well, that's down to their contents.

  • Are they talking about the same invention and protecting the same things?
  • Are they protecting the same invention but claiming (and therefore protecting) the same aspects using different wording?
  • Are they altering their original invention completely?
  • Can the invention actually be seen as two or more distinct inventions?

Given below is an explanation of each of these things. After each area, a very basic example is given to illustrate what that member might look like compared to the original invention.

Remember, these terms are largely localized to the USPTO. Other jurisdictions may have similar concepts but those will not be defined here.  

Continuations

When someone files a patent, naturally the desired outcome is to obtain as strong a protection for an invention as possible. One of the ways to increase the protection on an idea (another way to say this is to "increase the scope" of protection) is to file a continuation. This is a patent application that continues the examination of the application. Whilst more expensive, it is a route many applicants take in order to protect their ideas.

Whilst the original patent issues, one can argue for a different definition on what is being protected. Most often this will take the form of different or reworded claims on the same invention. It's a way to take one application and turn it into another or two more documents.

There are many clear reasons to file a continuation:

  • Whilst your first patent should always be as "strong" as possible, it might be wise to approach the invention from several descriptive angles to reduce the likelihood that another applicant can describe the same invention in a way that navigates around and therefore doesn't infringe.
  • If you have multiple sets of claims, then it's harder for competition to understand exactly what the limit of your invention is. If you keep filing continuation after continuation, the definition of what you have invented is largely ambiguous and will prevent competitors from being able to define their own patents. It's a bit like when you're having an argument; it's tough for someone to rebut what you've said until you stop talking!
  • Bigger patent families tend to be more valuable. If your R&D team has created one invention, then would you rather have one patent around that, or six? Increasing patent output is a performance indicator for many organizations and the more valuable IP you can extract from a single invention, the better.

Example:

Original Invention: Chair with four legs, a seat, two armrests and a backrest.

Continuation: Chair with four vertical supports, seat, horizontal cushion and a spine support mechanism.

Continuations-in-part

It's not always enough to talk about the same invention in different ways. Occasionally (or often, depending on the applicant) you'll see variations on an invention. And a lot of the time, the variation is close enough in scope to an existing invention, that you can file a continuation-in-part. For example, if your original invention constitutes a chair, with four legs, two armrests, and a seat. That is everything described in the description area of the document. A continuation-in-part would add subject matter to that description - in this example that might be a cup-holder built into the armrest of the chair.     

Example:

Original Invention: Chair with four legs, a seat, two armrests and a backrest.

Continuation-in-part: Chair with four legs, a seat, two armrests, a backrest, and cup-holder.

Divisionals

In some circumstances, it may turn out that an invention that's been filed actually constitutes two separate and distinct inventions. Let's say in our example, our chair had an added technology of a speaker embedded into the headrest. The patent examiner may look at this invention and see it really as two distinct inventions - a chair and a speaker. At this point, the patent examiner would recommend to the applicant that they file two separate documents (both of which would claim priority from the original) that each describe a single and distinct invention.

Example:

Original Invention: Chair with four legs, a seat, two armrests, backrest, amplifier, subwoofer and 2 main speakers.

Divisional 1: Chair with four legs, a seat, two armrests and a backrest.

Divisional 2: Amplifier, subwoofer and two main speakers. 

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