listenup77 said:
Happy New Year. I have a question regarding continuation patent applications. What purpose do they play? Is it to add new or improved embodiments or claims you forgot to add? Also, if I have a pending non-provisional application and I file a continuation patent (and both get approved), can both be consolidated into one patent when filing internationally (preventing the cost of two filings)? Thanks.
As to your first question, a continuation is usually for claiming stuff that was disclosed in the parent application, but was not claimed. A common use for a continuation is in a situation where the parent application is about to issue, but it was discovered that something was disclosed but unclaimed, but you want the parent to issue so that you can assert the rights rather than having to go through more examination -- you file the continuation, allow the parent to issue, then, if all goes well, you will get the extra claims allowed in the continuation. A continuation adds no new material, just new claims -- the specificiation in the parent and continuation are identical. If you do end up adding new material, then the application is a "continuation-in-part."
As to your second question, you general can combine a parent and conitnuation into one application for PCT filings. It's more difficult to roll divisionals in with a parent for PCT filings, and oftentimes impossible to roll CIP's in with parents, but it depends on the exact nature of the various filings. However, even if you can roll up your parent and continuation into a single application, you will probably need to redraft the claims, because most countries (the Europeans in particular) draft their claims differently than we do in the U.S., and submitting the typical very large number of claims that we would use in the U.S. to the EPO would likely result in rejections and, even if the claims were to be allowed, would be very expensive compared to the U.S. For example, the use of multiple-dependent claims is very unusual in the U.S., but is common practice (almost required practice) in the EPO.
