Can a continuation be converted to a divisional?

[MYK]

Application gets a restriction requirement, group 1 is chosen.

Applicant files a CONTINUATION for group 2 because applicant's patent engineer doesn't understand the difference and refuses to listen to advice.

Can the continuation later be converted into a divisional?  If, after starting to prosecute the claims for group 2 and getting a partial allowance, the applicant later files a divisional trying to get broader claims, can this salvage the situation?  Can a divisional be filed two or three years from now after the original application is no longer pending, but dividing from a child continuation?

[mersenne]

I've always understood there to be precious little difference between a continuation and a divisional.  Mostly in the double-patenting area: in your situation, you're not supposed to get a double-patenting rejection on claims drawn to group II in view of the patent on group I.  But group II claims could be amended towards group I and get a DP rejection, so it's not a guarantee anyway.

I don't know any other reason that you'd be hurt by calling a divisional a continuation.  And IME, if you get a three-way restriction, then the second application (group II) is supposed to be a divisional, but the third is supposed to be a continuation, notwithstanding that you're pursuing a separate and previously unelected in the third app.

[MYK]

There's double-patenting, but there are also issues related to terminal disclaimers, common ownership, and patent term.  My understanding is that continuations are tied to each other, so the patents cannot be sold separately in the event that the company decides to sell off its IP.  A divisional has advantages over a continuation, and I hate to see the company lose those advantages because of one guy who just won't listen.

[Robert K S]

continuations are tied to each other, so the patents cannot be sold separately in the event that the company decides to sell off its IP

If there is some authority to support that proposition I would like to see it.  You may be thinking of continuations for which a terminal disclaimer was filed.  One of the requirements of terminal disclaimers is common ownership as enforced by language (as found in the USPTO's form disclaimer) "The owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and the prior patent are commonly owned."

My understanding is similar to mersenne's, that the names "continuation" or "divisional" are legally inconsequential.  There is no statutory or regulatory definition of either.  A "continuation" may or may not relate to different inventions than a parent, thus making it fall under the MPEP's definition of divisional.*  A "divisional" may or may not have resulted from a restriction requirement, thus entitling it (or not) to protection against nonstatutory obviousness-type double patenting rejections and the resultant requirements for terminal disclaimers to overcome those rejections.

If I wanted to change the status from continuation to divisional or vice-versa I would simply file a specification amendment amending the "cross-reference to related application(s)" section and an amended ADS using the online amended ADS creation tool.  But is it necessary to do this?  Is there any benefit?  I am skeptical.

*MPEP 201.06: "A later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application. The divisional application should set forth at least the portion of the earlier disclosure that is germane to the invention as claimed in the divisional application. ... A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application, but not an international design application). The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c)."

[Tobmapsatonmi]

continuations are tied to each other, so the patents cannot be sold separately in the event that the company decides to sell off its IP

If there is some authority to support that proposition I would like to see it.  You may be thinking of continuations for which a terminal disclaimer was filed.

Yeah, I kinda tripped on that at first, but pretty sure that's what he meant given his sentence just prior to the portion quoted.

If I wanted to change the status from continuation to divisional or vice-versa I would simply file a specification amendment amending the "cross-reference to related application(s)" section and an amended ADS using the online amended ADS creation tool.  But is it necessary to do this?  Is there any benefit?  I am skeptical.

Seems like it would work.  As to potential benefit, maybe it would stave off getting the OTDP rejection in the first place, so could avoid then having to make downstream arguments based on the other citations you've provided.

[Robert K S]

As to potential benefit, maybe it would stave off getting the OTDP rejection in the first place, so could avoid then having to make downstream arguments based on the other citations you've provided.

Agreed, so the benefit is as to client billing of attorney time clearing things up, but not as to ultimate patentholder rights.

Food for thought: is a continuation from a (restriction-inspired) divisional properly denoted a continuation or a divisional?  Is a (non-restriction-inspired) divisional claiming priority to a continuation application properly denoted a divisional or a continuation?  If you receive a restriction requirement in a priority application (let's call it Grandparent), and later file a continuation from Grandparent (let's call it Child) that seeks none of the previously restricted claims, and then, after Grandparent issues, file Grandchild, claiming priority to Child, with claims that were restricted and canceled from Grandparent, are you entitled to call Grandchild a divisional and (more importantly) receive protection against non-statutory double patenting rejections made in view of Grandparent?  What about made in view of Child?  At what point in the amendment of divisional claims are they so dissimilar to previously restricted claims that they are no longer entitled to the protections from non-statutory double patenting rejections?  After how many bites does an apple become a core?

[mersenne]

One other thing to remember: when you're filling out the ADS, I think you have to get the CON or DIV status of the ancestors the same as the USPTO databases have it, or you'll get that little asterisk that "this data does not match USPTO records."  I don't know whether that actually matters, but I'd guess it's yet another thing a defendant can nitpick.

I really don't understand why the USPTO can't fill that stuff out by itself.  You identify the parent app, and the PTO fills in the rest of the ancestor tree.  It's gotta be more common to do it that way, than to drop some ancestors (which then become prior art, right?)

[NJ Patent1]

A comment or two.  Divisionals get their own section (s. 121) that refers back to s. 120.  So I might say that a divisional is a "special flavor" of a continuation, filed in response to an election of invention RR, and entitled to a "safe harbor".  OK, does the initial denomination of an application as a CON instead of a DIV matter for the safe harbor that, afik, is exclusive to s. 121 divisionals? 

Is there anything in the paperwork (e.g. transmittal?) that says – or even hints – that the second application was filed in response to a RR?  If so, an amendment to the specification might fly.  If not, you may have to leave as is.  IMO, important is that the claims prosecuted in the "CON" slavishly follow the initial RR and election to maintain the ability to at least argue in court that the second app really is a DIV.  FWIW there are cases out there dealing with some of the scenarios Robert set-out.  As I best recall, harmony with the initial RR was key.  My hunch – only a hunch – is that if you do that there is a good chance that a court we see through an obvious error if an adversary tried to capitalize on the screw-up. 

As for maintaining identity of ownership of related CONs / DIVs, I agree with others; this relates to the claims and TDs, not the denomination of an application.  As for stringing divisionals, fairly confident yes.  You get a 4-way RR, the fourth DIV properly claims priority to the third, etc.  OK if you slavishly follow the PTO's initial RR, no "circling back".  There is (at least) one case addressing this, IIRC Teva Pharma was a party. 

[Robert K S]

a divisional is a "special flavor" of a continuation, filed in response to an election of invention RR

Can be but doesn't have to be.

I don't have a Teva Pharms. case in my collection but I do have Boehringer Ingelheim Intern. GMBH v. Barr Laboratories, Inc., 592 F.3d 1340 (Fed. Cir. 2010) (reversing invalidity finding because of safe harbor provision of section 121--see last paragraph before conclusion).

[lazyexaminer]

a divisional is a "special flavor" of a continuation, filed in response to an election of invention RR

Can be but doesn't have to be.

I don't have a Teva Pharms. case in my collection but I do have Boehringer Ingelheim Intern. GMBH v. Barr Laboratories, Inc., 592 F.3d 1340 (Fed. Cir. 2010) (reversing invalidity finding because of safe harbor provision of section 121--see last paragraph before conclusion).

NJ probably was referring to Pfizer v. Teva, 518 F.3d 1353 (Fed. Cir. 2008). The court refused to apply the 121 safe harbor to a CIP because the statute only permits it to be applied to DIVs. Thus the claims were invalid for double patenting. They also talk of the consonance requirement, i.e. folow the restriction requirement.

It seems to me that the court would not apply the safe harbor to a DIV that was not filed in response to a restriction requirement (your "can be but doesn't have to be") since the statute requires "a requirement for restriction under this section has been made" or "an application filed as a result of such a requirement" for the safe harbor. So I agree that you can file a DIV without a restriction, but you don't get the safe harbor. Your Boehringer case also makes that clear, yes? So "can be but doesn't have to be" is true, but the safe harbor is the whole point of a DIV, right?

[Robert K S]

Agreed, but I guess the question here is would or would not an applicant still be entitled to the safe harbor if the application were denominated as a "continuation" in the paperwork?

To make my point clearer, I believe that the answer is that an applicant would still be entitled to the safe harbor provision even if the application were denominated as a "continuation" in the paperwork.  My feeling is based on the definition of "divisional" in the MPEP (a divisional is defined by what it is, not what it is called).  And this is why I raised the issue of whether a "continuation" from a "divisional" is still a divisional entitled to the safe harbor provisions of section 121.  So long as it only contained claims that did not run afoul of the consonance requirement, the so-called "continuation" would still be entitled to the safe-harbor provisions.  This may or may not be an untested theory but I thought I ran into a case covering this scenario before.

[lazyexaminer]

Yes, it's a good question. Teva suggests that the name matters, and if everything indicates CON and not DIV in the paperwork then it is not a DIV. But Teva is easier because a CIP is clearly its own thing, well defined, and different from a DIV. A CON and a DIV are essentially the same thing other than the claims.

So I could also see them saying, what matters is what you actually did. You never actually say "I am filing this under 121", so if you filed an app in response to a restriction and you have consonance then what you actually did is filed a DIV under 121, substance over form, even if you said CON. Just based on gut feeling I think that is less likely to win, but is possible. Probably just depends on the opinion of two judges on your panel, doesn't seem clear cut either way.

[bluerogue]

Agreed, but I guess the question here is would or would not an applicant still be entitled to the safe harbor if the application were denominated as a "continuation" in the paperwork?

To make my point clearer, I believe that the answer is that an applicant would still be entitled to the safe harbor provision even if the application were denominated as a "continuation" in the paperwork.  My feeling is based on the definition of "divisional" in the MPEP (a divisional is defined by what it is, not what it is called).  And this is why I raised the issue of whether a "continuation" from a "divisional" is still a divisional entitled to the safe harbor provisions of section 121.  So long as it only contained claims that did not run afoul of the consonance requirement, the so-called "continuation" would still be entitled to the safe-harbor provisions.  This may or may not be an untested theory but I thought I ran into a case covering this scenario before.

I had this on one of my apps before.  Application was subject to a restriction from another examiner.  Applicant presented the restricted claims in a new app filed as a con.  I gave a double patenting rejection.  They came back arguing that it was a div and the double patenting was improper.  I responded that it was filed as con, not a div.  No further arguments from applicant and they filed a TD.  Now whether that was because they decided it wasn't worth arguing at that point or whatnot, I don't know, but they stopped arguing at that point.

[Robert K S]

I agree that the filing of the terminal disclaimer in the instance described by bluerogue says nothing determinative about the propriety of the nonstatutory obviousness-type double patenting rejection.  I have filed many terminal disclaimers to overcome clearly or colorably inappropriate rejections simply as a matter of procedural efficiency: it was the path of least resistance towards allowance; the client had no plans to divest themselves of the patents; the terminal disclaimer would have no appreciable effect on patent term or enforceability; the terminal disclaimer fee was way cheaper than what it would cost to argue, appeal, and perhaps appeal again; etc. etc.  Realistically, the determinative case is not going to issue out of an ex parte prosecution dispute but out of a validity challenge in litigation.

[Robert K S]

Regarding the substance-over-form line of argument I develop in this thread (i.e., that a nominal "continuation" may indeed be a "divisional" subject to the safe harbor protections of section 121 against double patenting rejections and thus against terminal disclaimers and the fees and waivers that go with them, or against later invalidation by a court or cancellation by the PTO in reexam),* the Federal Circuit recently decided In re Janssen Biotech, Inc., 880 F.3d 1315 (Fed. Cir 2018), which cites Pfizer (mentioned upthread by lazyexaminer) for the proposition that "the protection afforded by § 121 is limited to divisional applications and patents issued on divisional applications."  Now, Janssen Biotech involved CIPs with intervening CIPs, but nevertheless the Janssen court was particular to point out that the safe harbor does not apply to continuations, either (citing the 2009 case of Amgen).

Where does that leave my substance-over-form argument?  Not totally resolved, I say, but not on the best footing, either:

Amgen has not presented us with any persuasive reason as to why we should deem the '178 and '179 continuation applications divisional applications for purposes of § 121. Amgen does not dispute that it denominated the '178 and '179 applications continuations, that it checked the continuation application box on the submitted form, or that its applications met the PTO's definition of a continuation application in MPEP § 201.07. See Amgen's Br. 38, 42. Instead, Amgen argues that, because the '178 and '179 continuation applications could have been filed as divisional applications, we should treat them as such for purposes of § 121.  While this argument convinced the district court to regard the '178 and '179 continuation applications as divisional applications, we are not likewise convinced.  We decline to construe "divisional application" in § 121 to encompass Amgen's properly filed, properly designated continuation applications.

Because the '178 and '179 applications were filed as continuation applications instead of divisional applications, we hold that the '933, '422, and '349 patents do not receive the protections afforded by § 121's safe harbor.

Amgen Inc. v. F. Hoffmann-La Roche, Ltd., 580 F.3d 1340, 1354 (Fed. Cir. 2009) (emphasis added).

Given this harsh form-over-substance ruling, it seems to me like it might almost be malpractice to ever check a "continuation" box in any case that has had a restriction requirement somewhere in its past.  A "continuation" should always be called a "divisional"--let the PTO or court figure out later whether voluntary or compelled by restriction requirement--lest the safe harbor be accidentally forfeited.

*I have to note that it seems that in 2010 I thought very differently about this topic than I did in 2017.  More on this topic here, too.