Scenario: My client filed a US Provisional 3 years ago and followed it up with a non-provisional 2 years ago. The patent has not been allowed (pending grant since issue fee hasn't been paid yet).

Problem: He now wants to extend his patent to EU, China and Australia, years after the 12-month period for Convention/PCT applicaiton expired.

Can he file a Continuation or CIP in the USPTO right now and then file a corresponding application in EPO, Aus, China, etc?

Will the parent application filed in the USPTO be considered as prior art?

Question: What are the implications for: (i) Continuation Patent with the same spec but new claims; and (ii) CIP - slightly new subject matter and improved claims.

Will the parent US application be cited as prior art?


1 Answer 1


No, the Paris Convention is clear that the priority claim must be based on the first-filed application on the subject matter.

Almost no other locations even have plain continuations and CIPs are viewed as very odd.

Assuming the US application is published it will certainly be found in any search by the EPO, SIPO, etc. If the ideas an inventor has for a CIP are patentable over the original disclosure then one could apply for patents covering that new twist/extension of the invention but that will not protect the original invention in those countries.

If it has not been published or disclosed that is another question.

  • 1
    Perhaps you might explicitly answer the last question: "Will the parent US application be cited as prior art?"
    – Eric S
    Commented Sep 30, 2023 at 16:56

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