1. Tim Saulsbury -- Continuations in Part
A continuation in part (“CIP”) is a type of continuing application that:
shares* the priority date of an earlier “parent” application
adds information that was not in the parent application
yet repeats some substantial portion of the parent's specification
35 USC 132(a) (no new matter); Rule 53(b)(2) (37 CFR §1.53) (CIPs and other types of continuING applications and their filing dates); MPEP (CIPs)
6/27/2018
Tim Saulsbury -- Continuations in Part

2. Continuing applications generally
A continuing application is filed
to pursue additional claims to
subject matter in a parent application
These child applications are often, but not always, filed
to overcome problems the examiner has with the parent
There are 3 types: continuation, divisional and CIP.
35 USC 132(a); 37 CFR 1.53; MPEP
6/27/2018
Tim Saulsbury -- Continuations in Part

3. Possible Reasons for Filing a CIP
The applicant needs to amend the specification to satisfy § 112.
E.g., the Examiner rejected claims in the parent
for lack of support in the specification,
then objects to an amendment to the specification because it introduces new matter.
After filing, the applicants improved their invention. They can use the priority date of the parent as a shield, at least as to what discloses.
(But beware of 102b activities by the applicants that involve the NEW MATTER.)
6/27/2018
Tim Saulsbury -- Continuations in Part

4. Tim Saulsbury -- Continuations in Part
Dangers & benefits
Dangers:
loss of priority date if new matter is necessary to support claims; the priority date of such claims is the CIP date
shorter length of patent life if the CIP shares its parent’s priority date
cost of filing the continuing application
Benefits: the applicant can get claims that are more tailored or cover a wider range of activities by potential infringers
6/27/2018
Tim Saulsbury -- Continuations in Part