Can a continuation be sold separately from the parent patent?


Can a continuation be sold separately from the parent patent if no terminal disclaimers are in place?

Keir Finlow-Bates

Posted 2019-04-10T09:57:08.553

Reputation: 409



Yes, absolutely, as long as there is not a terminal disclaimer that ties the applications together. A terminal disclaimer might be required during patent prosecution to avoid a rejection based on double-patenting. Under a terminal disclaimer common ownership of the covered patents is required. Both must be sold together with the requirement that they stay commonly owned.

Assuming no terminal disclaimer, there is no problem with selling or licensing the patents independently. An example of the strategic use of this might be the case of a core parent patent and several patents that issued from continuation or divisional applications where the other patents applied the core invention to different fields. Hypothetically a conceptually new type of saw blade (core patent) and child applications on a surgical tool, a tree trimmer and a potato peeler would make a good example. The patent owner could give non-exclusive licenses to four companies on the parent application and exclusive licenses each respectively for the surgical tool, tree trimmer and potato peeler. This example only fits the question if the parent had fully disclosed the three tools using the new blade or if the "sub-patents" were CIPs, a kind of continuation.

An alternative to an exclusive license is to actually sell a patent. This would be called an assignment. In my example the tree trimmer patent could be assigned rather than exclusively licensed.

George White

Posted 2019-04-10T09:57:08.553

Reputation: 21 648

That's a useful possibility I hadn't considered before - and I guess you can also sell an exclusive transferable license. – Keir Finlow-Bates – 2019-04-10T19:41:57.827

1As another answer pointed out, the word "sell" is not usually used with "license". License is "I will let you do the following . . . ". Sell is "it is all yours". Just terminology. In an assignment, the owner frequently gets a lump sum and in a license the owner frequently gets on going royalty payments. – George White – 2019-04-10T19:54:44.617