Pros and Cons of Continuing Patent Applications: Strategic USPTO Filing Guide
Our firm, Loginov IP, has a strong track record of obtaining valuable U.S. patents with broad, enforceable claims. However, securing an issued patent is often not the end of a strategic IP process. In many cases, we advise clients to consider filing a continuation or divisional application under U.S. Patent and Trademark Office (USPTO) Rule 37 C.F.R. § 1.53(b) — even after one or more patents have granted.
Why would you keep another patent application pending after successfully obtaining a patent right? Because a continuing patent application can be one of the most powerful strategic tools in building and maintaining a competitive intellectual property portfolio.
Below, we break down the types of continuing patent applications, their advantages and disadvantages, and when filing one makes business sense.
What Is a Continuing Patent Application?
A continuing patent application is a later-filed application that claims priority to an earlier, still-pending U.S. patent application. If properly filed before the earlier application issues, it preserves the benefit of the earliest filing date for any concepts disclosed in the original application.
By filing serial continuations — each before the prior one issues — applicants can keep a patent family pending at the USPTO for years. This strategy allows ongoing claim adjustments as technology, markets, competitors–and the law– evolve.
For companies engaged in commercialization, this flexibility can be extremely valuable.
Types of Continuing Applications
There are three primary types of continuing applications under U.S. patent law:
1. Continuation Applications
A continuation contains the same specification (description and drawings) as the parent application, but includes new or revised claims. It does not add new subject matter.
Applicants typically use continuation applications to:
- Broaden or narrow claim scope
- Pursue different claim strategies
- Address competitor design-arounds
- Adjust claim language in response to evolving case law
Since the written description is already prepared from the parent application, costs are generally limited to claim drafting and prosecution.
2. Divisional Applications
A patent applicant files a divisional application in response to a USPTO restriction requirement under 37 C.F.R. § 1.142. The USPTO requires applicants to direct each application to only one “independent and distinct” invention. If an examiner determines that the application claims multiple inventions, the applicant must elect one group of claims. The examiner withdraws the non-elected claims, but the applicant may pursue them in a divisional application.
Failing to file a divisional may result in lost patent coverage for valuable aspects of an invention. For this reason, when the USPTO issues a restriction requirement, most sophisticated applicants pursue divisional filings to ensure comprehensive protection.
3. Continuations-in-Part (CIPs)
A continuation-in-part (CIP) includes the original disclosure plus new subject matter. It receives:
- The original filing date for the previously disclosed material
- A later filing date for the newly added material
Following changes under the Leahy-Smith America Invents Act (AIA), CIPs have become less common in some technology sectors because priority date issues are more critical under the first-inventor-to-file system.
CIPs involve more complex strategic considerations and should be evaluated carefully with patent counsel.
The Pros: Why File a Continuation or Divisional?
1. Preserving Full Patent Coverage After a Restriction Requirement
Restriction requirements are common. Examiners vary in how broadly they apply the rule, but the practical result is that potentially valuable claims may be withdrawn. A divisional application allows you to pursue those claims separately—preserving protection that might otherwise be abandoned. For technologies with multiple embodiments or implementations, this is often essential to building a strong patent portfolio.
2. Strategic Insurance Against Changes in Patent Law
Patent law evolves. Courts periodically reinterpret claim scope, subject matter eligibility, and written description requirements. For example, software and business method claims have been heavily impacted by judicial interpretation following decisions from the Supreme Court of the United States, including Alice Corp. v. CLS Bank International, which effectively restricts the availability of certain software and business method patents
If the state of the law shifts after your patent issues, you cannot amend granted claims. However, if you have a continuation pending, you may be able to draft new claims that comply with updated standards — potentially saving valuable IP assets. This flexibility has proven critical in certain industries.
3. Responding to Competitor Design-Around Attempts
Competitors study issued patents carefully. It is common for them to attempt a “design-around” by modifying one claim limitation to avoid literal infringement. If no continuation is pending, your ability to respond is limited.
If a continuation remains on file, you may be able to:
- Adjust claim language to cover the alternative implementation
- Add new claim sets targeting competitor products
- Clarify ambiguous terminology before litigation
In some cases, continuation claims have issued during active litigation and helped resolve disputed claim interpretation—significantly strengthening enforcement posture. For larger companies, maintaining at least one pending continuation in key patent families is often standard practice.
4. Ongoing Portfolio Flexibility
Markets evolve. A patent drafted five years ago may not reflect the most commercially important embodiment today.
A continuation allows you to:
- Shift claim focus to high-revenue products
- Add narrower claims better suited for enforcement
- Add broader claims supported by the original disclosure
- Tailor claims to licensing opportunities
This adaptability is particularly valuable in fast-moving industries such as software, electronics, and medical devices.
The Cons: What Are the Downsides?
1. Increased USPTO Fees
The most obvious drawback is cost. Under the USPTO’s updated fee schedule, continuation filings can involve:
- Standard USPTO filing fees (often around $1,000 for small to mid-sized entities)
- Additional surcharges if the earliest application in the family was filed more than six years ago
- Higher surcharges if more than nine years have passed
These late-continuation surcharges for small to mid-sized companies can exceed $1,000–$1,600, significantly affecting long-term IP strategy. For companies maintaining multi-year continuation chains, budgeting is critical.
2. Attorney Fees
While continuation applications do not require rewriting the specification or redrawing figures, they still involve:
- Strategic claim drafting
- Examiner interviews
- Office action responses
- Ongoing prosecution management
Though generally less expensive than preparing an original patent application, continuations still require meaningful legal work.
3. Risk of New Prior Art or Narrowing
A continuation reopens examination.
This can lead to:
- Discovery of new prior art
- Narrowing of claim scope
- Arguments that impact interpretation of related patents
In rare cases, arguments made in a continuation could affect claim construction in the issued parent patent. However, there is also a strategic upside: you gain clarity and strengthen the overall portfolio through additional examination. It is often better to address vulnerabilities proactively than to discover them during litigation, or when attorneys for a potential acquirer flag these issues. Having a continuation pending, which can address any weakness can literally save the deal.
When Does Filing a Continuation Make Sense?
Filing a continuation or divisional application is often appropriate when:
- A restriction requirement removed valuable claims
- The invention has multiple commercially important embodiments
- Competitors are actively designing around your patent
- The legal landscape is shifting
- The patent covers a core revenue-generating product
- You anticipate enforcement or acquisition/licensing activity
For early-stage companies with limited budgets, the decision may require careful cost-benefit analysis. For companies actively commercializing protected technologies, maintaining at least one pending application in key patent families can be a powerful long-term strategy.
Final Thoughts: Is a Continuing Patent Application Worth It?
On balance, continuing applications remain one of the most versatile and strategic tools available through the United States Patent and Trademark Office.
- They provide flexibility
- They offer insurance
- They enable responsive claim drafting
- They strengthen enforcement posture.
While costs have increased, the strategic value — especially in competitive markets — often justifies the investment.
Every serious patent applicant should evaluate whether maintaining a pending continuation aligns with their commercialization and enforcement strategy. If you are considering whether to file a continuation or divisional application, consult experienced patent counsel to assess your specific technology, competitive landscape, and long-term IP objectives.
Disclaimer
This article is provided for general informational purposes only and does not constitute legal advice. The information presented is not a substitute for professional legal counsel and should not be relied upon as such. Patent laws, USPTO procedures, and examination practices are subject to change, and outcomes may vary based on specific facts and circumstances. Readers should consult a qualified patent attorney regarding their individual situation.
