The Legal Blog

Filing Doesn’t Cover Everything. You Can Still Add More If You Act Fast with a CIP Application

Author: Naiya Chung, Sagacity Legal Intern

Let’s talk patent law, new subject matter, and protecting your inventions.

To begin, you might assume that once your patent application is filed, your work is done. However, if you have developed new features or improvements since filing, you may still have a chance to protect your new subject matter. A Continuation-in-Part (CIP) application allows you to add new material to your original application, as long as it is still pending. Timing is critical, so it is important to act quickly.

What Is a CIP (Continuation-in-Part)?

A Continuation-in-Part, or CIP, ibuilds on your original or “parent” application. The key is the original patent must still be pending. It allows you to keep everything from the original filing and also include updated subject matter that was not previously disclosed. The original content keeps its original filing date while any new material gets the CIP filing date.

To benefit from this, the CIP must be filed while your original application is still active. You must also clearly reference the earlier application at the time of filing.

What Is the 12-Month Rule?

You may have heard that a CIP must be filed within 12 months of your first application. This is true only in certain cases. The 12-month deadline comes from 35 U.S.C. Section 119 and it applies if you are claiming priority from a provisional application or a foreign filing under the Paris Convention. If you are filing a CIP based on a non-provisional U.S. application, there is no strict 12-month limit as long as your original application is still pending.

Due to this, it is important to talk to your attorney as soon as you consider adding new material. Waiting could cost you valuable rights.

What Happens If You Wait Too Long?

If your original patent application is approved or abandoned before you file a CIP, you lose the ability to file one. Your only option at that point is to file a brand-new patent application. But this comes with risks. Your original application could count as prior art against the new filing, which might block you from patenting your own improvements.

There is also a competitive risk. Someone else could file a similar patent before you do. If your improvements were not included in the original application, you cannot claim priority, even if you came up with the idea first.

The Patent Law Takeaway:

The best strategy is to act while your original application is still pending. Ideally, talk to a patent attorney once your improvements are developed or within the first year if you are relying on foreign or provisional priority. Filing a CIP in that window lets you protect both your original invention and any additions.

If you want to protect your invention and any new ideas, timing is everything. Do not wait. Explore your options and contact Sagacity Legal today.

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