Considerations for Patent Continuations and DivisionalsOctober 2, 2025

            Patent applications are often drafted very early during the development of a system, method, or apparatus. This could be during the development of a new or upcoming product offering, or iterative improvements to existing products. There can be conflicting considerations in (1) covering the new development, while also (2) disclosing as broadly as possible potential future considerations, such as how a market may react. The secondary consideration is important, especially when the development is game-changing enough that competitors and others attempt to copy or otherwise encroach the coverage of the patent. Often, patent holders will file continuations or divisional applications (collectively, “continuing applications”) during the pendency of a filed application, which can be done up until 20-years of filing the original application.

            A continuation patent application allows a patent applicant to pursue patent claims based on the same specification and drawings as previously filed in the pending “parent” application. Like a continuation application, a divisional patent application uses the same specification and patent illustrations as the parent application and shares the same priority date. Unlike a continuation application, which contains new or different claims, a divisional patent application presents patent claims that the applicant already filed with the parent application, but are deemed by the Patent Office examiner to be directed to a separate invention as other claims in the application, such as product and method claims.

            Either continuations or divisional applications can be important. For example, if a competitor were to introduce a product that may work around the claims of a first patent, a continuation allows for some variation in the claim coverage to block or cover the competitor, so as long as there is support in the originally filed application. It can be a bit of cat and mouse game, but for the patent holder, continuations and divisionals allow for flexibility as markets change.

            However, there are some recent developments to consider when pursuing continuation or divisional applications.

Prosecution Laches

            The legal theory of patent prosecution laches is a defense for potential infringers to state that a patent applicant can forfeit the right to a patent based on “an egregious misuse of the statutory patent system.” As recently indicated in a case between Google and Sonos (Google LLC v. Sonos, Inc., No. 2024-1097 (Fed. Cir. Aug. 28, 2025), prosecution laches requires both (1) an unreasonable and unexplained delay in patent prosecution and (2) a showing of prejudice to the accused infringer in the form of intervening rights (e.g. evidence that others “invested in, worked on, or used the claimed technology during the period of delay”).

            In Google, the Federal Circuit held that Sonos did not delay filing continuation applications during the pendency of their patent family, and Google (nor others) relied upon any perceived delay by Sonos to make any investments in competing (i.e., potentially infringing) technology.

            The case is important to show that patent holders and applicants need to be in consistent communication with counsel to make sure that any need for a continuation or divisional application is timely filed to mitigate the ability of a potential infringer to be able to raise prosecution laches as a defense.

New USPTO Fees

            Another issue when considering whether to file a continuation or divisional is the length of time from the original patent (the “parent application”). As noted, a patent applicant can file a continuing application up to the full pendency (i.e., 20-years) of the parent application, as long as at least one application is still pending. Traditionally, the filing fee for any continuing application was the same as the parent application.

            However, this changed on January 19, 2025. As indicated in previous blogs (see, e.g., https://www.filewrapper.com/uspto-issues-patent-fee-changes-for-2025/), the USPTO issued new fees.  The new fees for applications with an actual filing date of more than six years, but no more than nine years, from the earliest benefit date will be $2,700 (up from $2,000) for undiscounted applications, $1,080 (up from $800) for small entity applications, and $540 (up from $290) for micro entity applications. For those applications having an actual filling date more than nine years from the earliest benefit claim, the fee for undiscounted applications will be $4,000, small entity fees will be $1,600, and micro entity fees will be $800.

            The date starts with the filing of the first non-provisional patent application in the filing and not any provisional patent application. However, as shown, the fees are not insignificant, and are doubled for applications filed nine years after the parent application. This is a major consideration for patent applicants, and should be considered when thinking about filing a continuing application.

            Therefore, while continuing applications can be important to protect inventions, especially some time after initial conception and filing of a parent application, additional considerations should be taken into account before rushing to file. The costs, potential value, any intervening circumstances, as well as competitor activity should be thought out. The attorneys and agents of McKee, Voorhees & Sease, PLC diligently stay on top of all changes and updates to patent law and are the best suited to help clients of all sizes develop, maintain, and strategically grow their patent portfolios. There is no one size-fits-all strategy, and we are set for any situation, as a boutique IP specialist law firm.

Luke T. Mohrhauser (LinkedIn: https://www.linkedin.com/in/luke-mohrhauser-988a3010/) is a Patent Attorney, Managing Partner, and Chair of the Mechanical and Electrical Practice Group at McKee, Voorhees & Sease, PLC. For additional information, please visit www.ipmvs.com or contact Luke directly via email at luke.mohrhauser@ipmvs.com.