Patents 101: Continuous Improvement and CIP Patents
Innovating and evolving your idea doesn’t stop just because you have a patent. It may be that once you have your initial patent and you begin sharing the idea with others, you will come up with improvements or ideas for how your design needs to evolve. This was the case with our own self-shredding label design. Our original idea involved using a thin filament to release tiny chads that shred a label after it was used. As we met with manufacturing experts to discuss producing the labels using standard manufacturing equipment, we discovered a better way to accomplish the same goal without the added filament. Our concept was the same, and the design was very similar, but a small improvement in the way the components were designed created a much more stable and cost-effective product.
So, what do you do when you’ve modified your design after you’ve already filed your first patent? In the US, new claims can be added to an existing patent during prosecution, or by filing a divisional or continuation application, but if you want to add new material and new disclosure, you will have to file a new patent application known as a CIP or Continuation-in-Part application. There are a few things to understand about a CIP. First, any prior art that arises after the filing date of your first patent and before the filing date of your CIP patent, can be cited against your new application. Meaning, if prior art against the new material in your CIP application exists, your new claims may be rejected; you don’t benefit from your earlier filing date if new prior art compromises the new design. Second, filing a CIP patent does not change the term length of the patent. Your 20-year term for your patent starts from the earliest prior non-provisional application filing date. So, your full patent term is shorter; the term starts at your first filing date, but your full protection starts at the CIP filing date.
Of course, in patents timing can be very important. In general, if you are going to add claims to your original patent you are better off doing so as soon as possible, to avoid prior art problems and to maximize your term length. That is why doing as much research and development, prototyping, and investigation with potential partners as early as possible is important. Ideally, your initial patent filing should contain all the disclosure you will ever need, and divisional applications can be used to secure any further claims to the material which may arise as you develop. However, if new improvements outside the scope of your original disclosure become apparent, a CIP is one way of securing rights.
We found there was incredible value in meeting with experts and showing them an early animation of our design as well as the technical documentation under NDA, even before our patent had been granted. It led to new innovation and additional claims that we could add to our IP. If you’d like to see an animation of the improved design of our self-shredding label, check it out here.