From time to time I encounter a client or foreign colleague that asks whether some soon-to-be-filed US patent application ought to be termed a CIP (continuation-in-part) of a previous patent application by the same applicant. The way I look at it, this used to be a good idea but nowadays is rarely if ever a good idea. I hope that folks will post comments with their thoughts about this.
Those of us whose patent practice preceded June 8, 1995 will recall the days when the term of a US utility patent was seventeen years from the date of issue. In those days, a decision to call something a CIP did not adversely affect the term of the to-be-granted patent. The decision to call something a CIP was in the nature of “can’t hurt and might help”. The usual practice in those days, when we were getting ready to file a new patent application for a client with previous filings, was simply to call any new application a CIP of any and all copending applications filed by that same client. Each of us has at one time or another reviewed the file wrapper of a granted patent where the CIP relationships go back a decade or more, through a dozen or more previous filings by the patent owner.
When I see this in a modern-day patent application, especially in a patent where it looks like the underlying application was poorly or hastily drafted, I imagine the drafter’s decision to call the application a CIP of everything the applicant ever filed previously (and to incorporate it all by reference) was based at least in part on a desperate effort to reduce the risk that the poor or hasty drafting would turn out to be missing something important. The hope of course was that if in a later office action the Examiner said something lacked support, maybe the hapless practitioner could find the missing support somewhere in the list of applications in that long and rambling opening sentence. Or if, in response to an office action, the practitioner needed to add yet another limitation to a claim to try to overcome the prior art, maybe the language of the desperately needed new limitation could be found somewhere in that list of applications.
And maybe some readers have encountered the sort of thing I have run into from time time when a new client transfers in its portfolio of pending US patent applications that were drafted by previous counsel. And there, too, nearly every one of the pending applications calls itself a CIP of most if not all of the other members of the portfolio.
These days when I see a pending application that calls itself a CIP, my reaction is to recommend that the client delete the CIP relationship. The reason, of course, is that the patent term in recent years is twenty years from the oldest US non-provisional filing date. So a decision to call something a CIP is a decision to forgo months or maybe years of patent term.
Let’s turn now to a particular fact pattern. Suppose that the would-be parent of the would-be CIP was itself published more than one year before our soon-to-be-filed filing date. Then the unhappy situation is that the Examiner will be able to cite that publication against the new application.
The alert reader might then ask “well if the publication of the would-be parent can be used to kill our patent application, then what is the point of calling something a CIP”? Which is a very good question. And there are maybe two answers.
The first answer is that sometimes you will get lucky and the first publication of the parent case will happen to be less than a year before the present (new) filing date. In such a case the Examiner will probably not use the publication against the application because of the remnant of the one-year grace period that still remains in Section 102 even after the America Invents Act.
The second answer is that in a CIP, the Examiner proceeds on a claim-by-claim basis to work out what is the effective filing date of each claim. Suppose that (I am making this up) claim 7 of the new case happens to be supported by the parent case. If so then the effective filing date of claim 7 is the same as the filing date of the parent case, and this beats the publication of the parent case so far as the patentability of claim 7 is concerned.
The other thing that might, I suppose, happen is that a particular Examiner might somehow misunderstand what a CIP is and might think (incorrectly) that a CIP relationship somehow trumps the previous publication of the parent case even when the publication was more than a year earlier and even when the claim being examined is supported only by the new filing date. The applicant whose case falls on the desk of such an Examiner might well obtain an allowance of that claim without the Examiner having taken into account the pertinence of the publication. But it cannot be likewise assumed that the adversary in later litigation would overlook this.
Maybe sometimes nowadays when an applicant calls a new application a CIP, it is in the hope that their application might get assigned to such an Examiner. The way it looks to me is that such an applicant is, I guess, scratching off a lottery ticket, and the purchase price of the lottery ticket is the loss of some years of patent term.