What is continuation practice?
Continuation procedures are vital in the prosecution process. They are what permit us to keep the application alive, and subject to continued examination by the Patent Office.
There are three main continuation practices: continuations, continuation-in-part (CIP), a divisional, and a request for continued examination. Back in the day, CPA (continued prosecution application) used to be another option, but that is only used for design patent applications now.
I have summarized many of the continuation procedures below in a series of succinct tables.
| Practice | Application Process |
| Continuation | Starts a new application from the beginning (restarts the prosecution process). |
| Divisional | Starts a new application from the beginning (restarts the prosecution process). |
| CIP | Starts a new application from the beginning (restarts the prosecution process). |
| RCE | Continues forward with prosecution based on the last action taken in the application. |
| Practice | When it is normally used |
| Continuation | To advance prosecution and obtain an allowance on a set of the allowable subject matter. |
| Divisional | Normally filed in response to a restriction requirement by the Examiner. Goal is to protect separately patentable subject matter. |
| CIP | Claim additional patentable subject matter not disclosed in the priority document. |
| RCE | Continue prosecution after it has been closed (e.g. after final office action and allowance has not been given, etc.). |
As indicated, a continuation, divisional, and CIP are all treated as a new application. As such, they must meet all the requirements of an original patent application, and must correctly claim priority to the appropriate document(s).
A divisional is exactly as it sounds. We have the original patent pie application and we divide the patentable subject matter pie up into one or more applications. A continuation in part is really designed where we want to claim part of the benefit of an earlier filed application, but want to disclose additional information.
Lastly, a RCE is a very common strategy and simply allows the applicant to continue the prosecution process with the application. No new matter is added, and a new application does not need to be filed. The process simply continues wherever it was last left off. One downside of filing an RCE is that it reopens the prosecution process and so may delay getting claims to allowance. As such, as indicated in the continuation example, it may make sense in some instances to file a continuation to claim allowed subject matter and then file a RCE to prosecute the remaining items.