Continuation Drafter
Continuation practice, from the authorities
Twenty-eight decisions and rules that govern United States continuation practice. Each one is quoted from its primary source, and every quotation is checked against a cached copy of that source by a script rather than by eye.
Written for licensed patent practitioners. These pages report what an authority held and how it bears on drafting. They do not assess anyone's claims.
Currency. Every record was verified against its primary source on or after 2026-08-15. That is a fidelity check: it means the quotations, locators and attribution are accurate to the source. It does not mean the authority has been re-checked for later decisions narrowing or reversing it. Confirm an authority still stands before relying on it.
Tier A: the term and double-patenting spine
Allergan protects less than practitioners hoped
The USPTO's own reviewing panel read Allergan v. MSN narrowly, reinstated the double-patenting rejections its Board had reversed, and told examiners the Allergan exception will rarely if ever come up during original examination.
The term the Office gave you can be the term that kills the claim
The Federal Circuit held that patent term adjustment is added before the double-patenting comparison is run, so a continuation that earned extra term for Office delay can be invalidated by an earlier-expiring relative it is obvious over.
A parent cannot be invalidated by its own children
The Federal Circuit reversed a district court that had read In re Cellect to invalidate the first patent in a family over two of its own later-filed continuations, holding that the first-filed, first-issued patent sets the family's maximum period of exclusivity.
Extension survives, adjustment does not
The Federal Circuit held that obviousness-type double patenting does not cut off a validly obtained patent term extension under Section 156, so long as the patent was already valid at its pre-extension expiration date.
The cure is permanent, and it was nearly made more expensive
A terminal disclaimer ties a patent's expiration and its ownership to another patent, it cannot be undone once the patent issues, and the 2024 rule that would have also forfeited enforceability whenever the other patent lost a claim to prior art was withdrawn in December 2024 and never took effect.
Tier B: written description and priority for continuation claims
The more you claim, the more you must enable
A unanimous Supreme Court held that a specification claiming an entire functionally defined class of antibodies must enable a skilled person to make and use the whole class, and that disclosing 26 working examples plus a screening protocol left scientists to random trial and error rather than enabling them.
Disclosing every possibility describes none of them
The Federal Circuit affirmed that earlier applications reciting a compendium of possible chemical substituents did not describe the subgenus claimed years later, so the patent lost its priority date and was anticipated by an intervening publication.
A narrower range inside a disclosed range is usually described
The Federal Circuit reversed a written-description finding and held that a claimed subrange narrower than any range the specification spells out is still described, where the technology is predictable, the limitation is simple, and nothing shows the subrange is a different invention.
The competitor's product became the prior art
The Federal Circuit reversed a jury verdict and held a continuation invalid, because the 2004 parent disclosed an enormous genus of peptide units without reasonably specific support for the 81-member subgenus claimed in 2019, so the patent lost its priority date and the competitor's publicly disclosed product anticipated it.
The specification did not change. The claims did.
The Federal Circuit affirmed that claims to a specific therapeutically effective dose were invalid for lack of written description, because the 2007 disclosure they claimed priority from was a drug-discovery document that mentioned the dose exactly once, inside a range, and the new claims were written in 2011 once clinical results were in.
The parent's own publication became the reference
The Federal Circuit affirmed that ranges added by amendment to a fifth continuation lacked written-description support in the 2009 parent, so the claims lost that filing date and were anticipated by the publication of the parent application itself.
Silence is not a description of absence
The Federal Circuit granted rehearing, vacated its own earlier affirmance, and held that a specification saying nothing about loading doses did not describe a claim limitation requiring their absence, because disclosure rather than silence is what written description needs.
The preamble is not free text
The Federal Circuit held that the limiting preamble of a Jepson claim must itself be supported by written description, so reciting the prior art in a preamble puts that recitation inside the support burden rather than outside it.
You did not invent what you did not disclose
The Federal Circuit held that a provisional disclosing C2-C12-alkyl does not provide written-description support for C1-alkyl, even where the applicant says the C2 was an obvious typographical error, so the later patent lost its priority date.
Tier C: effective filing date and the AIA transition
Under the AIA, a reference's provisional counts without a supported claim
The Board held, precedentially, that for prior art under the AIA a reference patent gets its provisional's filing date for whatever subject matter the provisional actually describes, with no need to show that any claim of the reference is entitled to that date.
One supported claim does not carry the whole disclosure back
The Federal Circuit held that a pre-AIA prior-art publication does not get its provisional's filing date for everything it teaches merely because one of its claims is supported by that provisional; the passage relied on in the rejection must be supported too.
Which regime your family is in decides which proceedings can reach it
The Federal Circuit held that patents whose effective filing dates all fall after March 16, 2013 are governed exclusively by the first-inventor-to-file regime and cannot be placed in an interference, reversing a Board decision that had cancelled such claims.
Lose the priority date, gain a post-grant review
The Federal Circuit affirmed a finding that the claimed formulation was not described in the application Purdue claimed priority to, which moved the patent's effective filing date past March 16, 2013 and made it eligible for post-grant review, and separately held that the Board keeps authority to decide after missing its statutory deadline.
Tier D: timing, laches, and the new carrying costs
Six years of unexplained delay moves the burden
The Federal Circuit held that where the Patent Office shows unreasonable and unexplained prosecution delay exceeding six years, the burden shifts to the applicant to prove the absence of prejudice, and defined prejudice as intervening investment in the claimed technology.
An infringed patent can still be unenforceable
The Federal Circuit affirmed that a patent a jury had found infringed was unenforceable for prosecution laches, because the patentee's delay was unreasonable and inexcusable under the totality of the circumstances and the accused infringer was prejudiced by it.
Delay alone did not carry it
The Federal Circuit reversed a judgment that had held long-pending patents both invalid for lack of written description and unenforceable for prosecution laches, restating that laches requires unreasonable and inexcusable delay plus prejudice attributable to it.
Late continuations now carry a surcharge
From 19 January 2025 a nonprovisional application whose actual filing date is more than six years after its earliest benefit date owes an additional fee, at one rate between six and nine years and a higher rate beyond nine, payable when the benefit claim that triggers it is presented.
One year, not two, before you must explain the delay
From 13 August 2026 the USPTO requires an additional explanation of the circumstances surrounding a delay whenever a petition based on unintentional delay is filed more than one year after the action was due, down from two years, and the higher petition fee threshold moved to match.
An already-expired patent is worth nothing, including provisionally
The Federal Circuit held that provisional rights under Section 154(d) arise only where the patent would issue with exclusionary rights, so an application whose patent would issue after the term had already run produced no rights at all and the appeal had no jurisdictional basis.
Tier E: adjacent practice areas
The shield only covers a divisional, and only if you filed it
Section 121 bars using a patent from a restricted application as a double-patenting reference against a divisional filed before that patent issued, but the protection reaches only divisionals filed in response to an Office restriction requirement, and eight named situations take you outside it.
The parent's file history follows the claim, not the family
The Federal Circuit vacated claim constructions that had imported limitations into a continuation from the prosecution of two earlier family members, holding that a related patent's prosecution history is relevant only where the claims share a limitation in common, and that sharing subject matter is not enough.
A covenant on the parents is not a licence to the children
In a nonprecedential decision the Federal Circuit affirmed that a unilateral covenant not to sue on two parent patents created no implied license to their continuations, distinguishing the implied-license cases on the ground that all of them involved bilateral covenants.
Two drawings are two embodiments, not a range
In a nonprecedential decision the Federal Circuit affirmed that a utility application depicting six-by-six and six-by-four arrays did not describe a later-claimed six-by-five design, so the design application lost the utility filing date and was anticipated by that same utility application.