Who among us has not witnessed a patent owner wishing a continuation was still pending, or a client reviewing a competitor’s patent and thanking their lucky stars that there is not a continuation still pending. Studies have shown that a statistically significant factor to patent valuation is whether a continuing application ((continuation/divisional)) was filed or is still pending.
While not every family should include a continuing application, every case should be evaluated for one according to the client’s business strategy so that a conscious decision can be made in this regard. Some factors that can be helpful in making this determination are listed below (this is definitely a non-exhaustive list - feel free to add more in the comments). While this list is clearly incomplete, it should be appreciated that not every factor matters in every case.
Timing - timing… is everything. That is one of the main values in a continuation application, it gives the applicant more time to see what happens in the market, what competitors do, etc.
The budget - continuations cost money. But so does every round of prosecution. Costs incurred and avoided should be considered, along with the timing of when costs are incurred as continuations/divisionals can help push out some costs (e.g., the cost of fighting for extra claim scope can be delayed out to a continuation).
The examiner assigned to the case - continuations and divisionals will almost certainly go to the same examiner, and most of the time that is true even for CIPs. Just as examiner data should be used in prosecution, it also aids in the evaluation of continuing applications. If the examiner is known to be difficult, this may weigh against a continuing application as resources may be better utilized on another case, or a new application for the client’s next invention.
The allowed claim scope (if any) - continuations are not just to obtain “broader” scope. Sometimes strategically more narrow claims can come in super handy. Likewise, just because some claims were restricted does not mean that those are the claims to pursue. Much knowledge is gained from the time of the original restriction to the time of filing a continuation (usually), and so the determination should re-evaluate the desired scope compared to what has already been obtained.
The extent of the application’s disclosure - sheer size does not always mean the application is better, but when searching for additional claims in a continuing application, it does not hurt. If the application was drafted with additional claim ideas buried in the application, that may be a positive factor since it may be very easy to add a new claim set and be assured priority is maintained.
Pendency - keeping an application pending and creating uncertainty for competitors is a key aspect of continuing applications, but if prosecution is speeding along and the same is expected for the continuation, it may be beneficial to identify ways to slow down prosecution in the continuing application.
The status of related family members - it may be advantageous to keep a continuation alive merely for the purpose of ensuring that later discovered prior art from foreign family members can be submitted and considered by the USPTO.
Competitor activity - not just competitor products, but evaluating whether competitors are actively filing in a specific area may increase the value of a continuation application in that area.
any many more…
While we have just scratched the surface, the point is that continuing applications are a key tool, and decisions regarding when and how to file them should align with the client’s business strategy.