Legal Definitions - continuation-in-whole application

A continuation-in-whole application is a specific type of patent application filed while an earlier, related patent application (often referred to as the "parent" application) is still pending before a patent office. Its primary purpose is to allow an inventor to pursue additional claims or arguments related to the original invention, using only the information that was disclosed in the parent application. Crucially, no new subject matter can be added to a continuation-in-whole application.

The main benefit of filing such an application is that it retains the filing date of the original parent application for all the common subject matter. This can be vital for establishing priority over other inventions and ensuring that the inventor's rights are protected for the full scope of their original disclosure.

• Example 1: Pursuing Additional Claims

  An inventor files a patent application for a new type of durable, lightweight material. After the patent office indicates that some of their initial claims are allowable, the inventor realizes there are other valuable applications and specific compositions of their material, all described in their original detailed disclosure, that were not explicitly claimed. To secure protection for these additional aspects without adding any new information, they file a continuation-in-whole application. This new application uses the exact same description of the material from the first application but allows them to draft and pursue new claims covering these additional valuable features, maintaining the original filing date.

• Example 2: Responding to Final Rejections

  A technology company has a patent application for a novel data compression algorithm. The patent office issues a final rejection on all the claims, stating they are too broad. The company believes they can overcome this rejection by rephrasing the claims or presenting new arguments based only on the detailed explanation of their algorithm already provided in their original application. To prevent the application from going abandoned and to gain more time to negotiate with the patent examiner, they file a continuation-in-whole application. This keeps the patent process alive and gives them another opportunity to secure patent protection for their invention using only the original disclosure.

• Example 3: Strategic Market Protection

  An inventor develops a sophisticated diagnostic medical device with multiple integrated sensors and software components. Their initial patent application focuses on the device's primary use in detecting a specific disease. However, they also envision future applications for individual sensor technologies or software modules within the device that could be separately patented for different markets. While the first application is still pending, they file a continuation-in-whole application. This allows them to pursue claims specifically tailored to these other components or functionalities, all based on the comprehensive description provided in their initial filing, without having to start a completely new patent process with a later, less advantageous filing date.