Can you file a continuation immediately after filing an application?


If I have a disclosure that lacks unity of invention, I believe that I can file an application, wait for a restriction requirement, elect one set of claims and then file a divisional with the second set.

Instead, can I file the same disclosure with the first set of claims, ensure the second set of claims are properly supported in the disclosure, and then file a continuation to the first with the second set of claims?

Furthermore, can I file the continuation on the same day, or even a few minutes after the first?

Finally, is there any "weird" date stuff that could happen due to patent term adjustments to either of the applications? For example, if the continuation issues before the parent, does its term get extended to the term of the parent if that subsequently issues and has a longer patent term adjustment?

Keir Finlow-Bates

Posted 2018-05-28T20:46:41.243

Reputation: 409

Why not make it two separate applications then? – DonQuiKong – 2018-05-29T06:16:33.937

When I file two separate applications covering clearly different aspects of similar disclosures I get provisional double patenting rejections. An analogy: a patent application for a steering wheel for an electric car, and a patent application for a tyre for an electric car - what comes back is "if steering wheel is broadly interpreted as tyre, there is unity of invention". – Keir Finlow-Bates – 2018-05-30T07:46:57.183

Whereas if you put both in one application, you get a restriction election requirement. So why not put both in one detailed description, file one set of claims, and file a continuation with a second set of claims. – Keir Finlow-Bates – 2018-05-30T07:48:20.847

then my first question would be, isn't an arguable double patenting rejection still better than a continuation (which can't be removed by arguing later)? (I don't know about all relevant aspects of that question so I don't have an answer, but my guess would be yes). – DonQuiKong – 2018-05-30T08:30:22.663

Yep, your answer plus this: lead me to believe two applications is the best approach. Also I hasn't considered that a continuation has a lot in common with a terminal disclaimer.

– Keir Finlow-Bates – 2018-05-30T08:36:00.257

I think, but this is just a feeling, I haven't had these problems and therefore no experience nor the relevant specific knowledge to back this up, that the best way would be to design both applications such that a very good argument why they have no overlapping claim exists and can be made with reference to the description. If that seems impossible, maybe a single application can cover the whole invention without unity problems. In theory those cases should probably cover all possibilities. In practice, maybe not. Then again, why not try to go for unityand restrict if needed? – DonQuiKong – 2018-05-30T09:14:58.627

What I'm trying to say is, you might be asking the “wrong“ question. – DonQuiKong – 2018-05-30T09:16:41.103

No answers