This consideration is of great importance in the field of biotechnology or pharmaceutical inventions. With many types of inventions, such as software or most electronics, the inventions are often obsolete within a few years. With these technologies, a reduction in the term of the patent by a couple of years is frequently unimportant. With biotechnology and pharmaceutical patents, however, often the most valuable time of the patent term is towards the end of the patent, when a therapeutic method or a drug is well known and is generating a great deal of revenue. Therefore, it is suggested in most situations that CIP applications needing the additional disclosure in order to support their claims should be filed, not as CIP applications but as original patent applications.
Continuation applications are useful in several different situations.
Commonly, upon initial examination of a patent application, the Patent Office will find that the applicant has impermissibly claimed more than one invention. For example, a patent application might disclose and claim a DNA sequence, a protein encoded by the DNA sequence, a vector for the DNA sequence, a method for transforming an organism with the DNA sequence, a method for expressing the protein, a method for use of the protein, a monoclonal antibody against that protein, and a diagnostic method utilizing the antibody. Like any continuation application, the divisional application must be filed during the time the parent application is pending and must claim only subject matter that is disclosed in the parent application. Continuation applications are also used when an applicant later discovers that a potentially patentable invention that was disclosed in the original application was not claimed. In this case, a later filed continuation application is filed to protect this invention.