This patent forum is moderated by Steven Malone, a former USPTO patent examiner, and has been created to help answer questions related to all aspects of patent filing, prosecution, and the internal procedures of the US Patent and Trademark Office.

Can I file a continuation of my patent application before it grants?

​-John

​October 19, 2017

​Mark,


It depends on which Art Unit your patent application ends up in.  Some Art Units have a 3 year backlog while other Art Units are taking cases as they come in.  In my practice I am seeing about 25% of the cases I file being looked at by the Patent Office within the first year after filing. 

​October 17, 2017

How long should I expect to wait for an answer from the Patent Office after my patent application is submitted?

​Thanks, Mark

​October 17, 2017

​John,


Yes, you should file a continuation of your patent application before it grants.  The USPTO requires any continuation or continuation-in-part application to be filed while the parent application is co-pending and not granted.  It is best to file the continuation application before paying the issue fee on the parent application.  If you have already paid the issue fee then you need to file the continuation fast.  I have seen cases where an issue fee was paid and a continuation was successfully filed a month later (still before the actual grant of the parent application).  Sometime the PTO takes two weeks to issue a granted patent on an allowed case after the issue fee has been paid and sometimes it takes longer.  It is a gamble to wait to file a continuation application after paying the issue fee on an allowed parent application.

​October 19, 2017