It is common for clients to seek an assessment of the prospects for U.S. patent grant  after multiple unsuccessful responses in order to determine if it is worth continuing the struggle. When the prospects for grant are bleak, choosing to cut losses and abandon a response may seem wise, but it is not always the optimal solution.

Is there a way to resurrect a U.S. patent application that appears to have no hope of grant? Indeed, there is. The Continuation-in-Part (CIP) system within the U.S. patent application process is a good choice for U.S. patent applications facing a dead end.

A CIP application allows for the addition of new technical content not present in the parent application. Before the parent application is granted, abandoned, or the application process is terminated, applicants can submit a CIP to salvage the parent application.

The CIP can serve as a patch for the parent application to a large extent. Even if the parent application is in poor condition, the CIP can use new technical content to mend the parent application and breathe new life into the U.S. application.

In practice, the timing of submitting a CIP is crucial.

If the prospects for patent grant are deemed unpromising, applicants can even choose to submit a CIP after receiving the first office action.

Submitting the CIP early not only helps overcome the “fatal” issues raised by the examiner but also saves a significant amount of response costs. After all, the cost of responding to a U.S. office action can amount to thousands of dollars.

Please note that it is not recommended to rush to submit a CIP upon receiving an office action. While a CIP can remedy a U.S. application, it also represents an expense equivalent to that of a formal U.S. application.

Therefore, it is not advisable to stubbornly argue or impulsively submit a CIP.

It is important to evaluate each individual situation carefully and select the most suitable course of action.

The CIP is a targeted continuation application that requires careful consideration from various aspects. It is necessary to thoroughly analyze the office actions and cited documents, understand the actual situation of the parent application, and gauge the examiner’s stance. Additionally, it is important to allocate enough time for preparation when considering filing a CIP.

For applicants unfamiliar with the U.S. patent application system and unaware of examination practices and important deadlines, it is recommended to seek assistance from professional patent agents. When necessary, it is advisable to have professional patent agents assess and plan the strategy for the U.S. patent application, aiming to save costs while efficiently safeguarding one’s rights.

If you are interested in learning more about CIP or require assistance, please feel free to contact us!