Patent Prosecution Tip: File Your Continuation and Divisional Applications Prior to or With Payment of the Issue Fee

“In the past…it took about two to three weeks for a patent to grant from the time the issue fee was paid. However, this is going to change as of April 18, and thus the ‘time buffer’ for filing a continuation, CIP, and/or divisional application will no longer exist.”

The United States Patent and Trademark Office (USPTO) sent out the following alert via an email on March 16, 2023:

This change to electronic patent grants as opposed to paper patents is in accord with the USPTO’s continued changes to an all-electronic and no paper system. Prior changes have included all-electronic office actions, and of course the USPTO’s EFS-Web system, in which filings are made electronically with the USPTO.

One important thing to realize is that a patent may grant very soon after payment of the issue fee, so if the Applicant desires to have a continuation, continuation-in-part (CIP), and/or divisional application filed (all such applications are referred to as “continuing applications”), they should really do so before or at the same time the issue fee is paid, in order to maintain the pendency with the to-be-issued patent.

In the past, based on what the author has experienced, it took about two to three weeks for a patent to grant from the time the issue fee was paid. However, this is going to change as of April 18, and thus the ‘time buffer’ for filing a continuation, CIP, and/or divisional application will no longer exist.

As such, patent attorneys should docket the filing of a continuation, CIP, and/or divisional application at the same time when the issue fee is filed, so that the loss of priority will not occur. The filing of continuation, CIP, and/or divisional applications is limited by the co-pendency requirement of 35 U.S.C. § 120, which stipulates that each subsequent application cannot be filed after the issuance, expiration, or abandonment of the parent application from which it immediately depends.

Will the USPTO issue a patent a day after the issue fee is paid on an application? Who knows, but to be safe, one should assume that this will occur, and have the continuation, CIP, and/or divisional application already filed with the USPTO.

Of course, all clients should be notified of this change ASAP, so that they can provide instructions for filing a continuation, CIP, and/or divisional application earlier than they have in the past. If an Applicant wants to file a continuation, CIP, and/or divisional application but has not provided a new set of claims to include in that application, then there are several approaches that can be adopted.  One approach is to file a placeholder claim, such as original claim 1 of the application that will be granted, and another approach is to file a claim similar to or exactly the same as patented claim 1 of the patent to be granted. In either case, one should follow up soon thereafter with a preliminary amendment with the desired set of claims, so as not to get a first Office Action with a 35 USC § 101 ‘same invention’ rejection is the event that the patent examiner assigned to the new continuation, CIP, or divisional application acts on the application very soon after it is filed with the USPTO.

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Author: gustavofrazao

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9 comments so far.

  • [Avatar for Anon]
    Anon
    March 26, 2023 10:38 pm

    Interesting question, PA.

    One may have to (still – while it lasts) time the petition/filing with the Tuesday “issue date.”

  • [Avatar for Patent Attorney]
    Patent Attorney
    March 25, 2023 04:50 pm

    I’m wondering how this will affect cases that need to be revived for unintentional abandonment. Typically, when these cases were revived you would get the issue notification and have that time buffer to file any CON/DIV applications. But now, will the patent issue the same day as the case is revived? How can a practitioner file a continuation in this circumstance? At the same time the petition to revive is filed? Thanks.

  • [Avatar for Pro Say]
    Pro Say
    March 24, 2023 01:49 pm

    Thanks Phillip and Lab. Critically important information with great approaches to deal with the change.

    Take note my fellow independent inventors.

    (Though I’m going to miss receiving “makes my day” printed patents in the mail.)

  • [Avatar for The Author]
    The Author
    March 24, 2023 05:50 am

    I checked a few cases that I prosecuted recently, and one issued as a patent 3 weeks and 1 day after the issue fee was paid, and the other issued exactly after the issue fee was paid. So, Actual Practitioner, if you really are what you say you are, touche.

  • [Avatar for The Author]
    The Author
    March 23, 2023 09:03 pm

    Don’t be so rude, Actual Practitioner. Did you wake up on the wrong side of the bed this morning?

  • [Avatar for IA]
    IA
    March 23, 2023 11:50 am

    Very good article Phillip – thanks for your information.

  • [Avatar for Actual Practitioner]
    Actual Practitioner
    March 23, 2023 10:48 am

    “In the past…it took about two to three weeks for a patent to grant from the time the issue fee was paid”

    Um, what are you smoking? For the past 20 years it’s been reliably 5-6 weeks from Issue Fee payment to grant. You rarely even have the issue notification in 2 weeks.

  • [Avatar for The Author]
    The Author
    March 23, 2023 09:47 am

    Thanks for that point, Lab Jedor. You are absolutely right about that.

  • [Avatar for Lab Jedor]
    Lab Jedor
    March 23, 2023 08:06 am

    Excellent advice. I knew it was coming, and a great reminder.

    If you want to buy yourself some time. The patents issue still on Tuesday. From the Federal Register: “Patents will be issued on a Tuesday shortly after the patent number is assigned.”

    This suggests to pay the issue fee within the proper time frame on a Wednesday (or on a Tuesday if you believe that the USPTO is not that fast), to give yourself several days to file co-pending cases.