Can you file a continuation immediately after filing an application?

Question

If I have a disclosure that lacks unity of invention, I believe that I can file an application, wait for a restriction requirement, elect one set of claims and then file a divisional with the second set.

Instead, can I file the same disclosure with the first set of claims, ensure the second set of claims are properly supported in the disclosure, and then file a continuation to the first with the second set of claims?

Furthermore, can I file the continuation on the same day, or even a few minutes after the first?

Finally, is there any "weird" date stuff that could happen due to patent term adjustments to either of the applications? For example, if the continuation issues before the parent, does its term get extended to the term of the parent if that subsequently issues and has a longer patent term adjustment?

Answer 1

1. Yes, you can file a disclosure with the first set of claims, ensure the second set is properly supported in that disclosure, and then file a continuation with the second set of claims. However, be aware this approach could potentially result in a double patenting rejection, which would require a terminal disclaimer.
2. You could file separate applications simultaneously for the different claim sets. Again, this strategy might lead to double patenting rejections if the claims are not patentably distinct.
3. The traditional approach of filing one application, receiving a restriction requirement, electing one set of claims, and then filing a divisional with the non-elected claims would likely avoid double patenting rejections. This is generally the safest route from a double patenting perspective.

Regarding timing, you can file a continuation on the same day as the parent application or even minutes after. The continuation needs only to be filed before the parent application issues as a patent or becomes abandoned.

As for patent term adjustments (PTA), there can indeed be "weird" date effects. If a continuation issues before its parent, and the parent later issues with a longer PTA, the continuation's term is not extended to match the parent's term. Each application receives its own independent PTA calculation based on its prosecution timeline.

The recent In re Cellect (2023) decision by the Federal Circuit is significant for patent owners who have obtained patent-term adjusted patents in the same patent family. The court held that term-adjusted patents can be potentially invalidated by patentably indistinct claims in earlier-expiring patents in the same patent family under the obviousness-type double patenting (ODP) doctrine. For the first time, patent term adjustment (PTA) was introduced into the ODP analysis.

A divisional application includes distinct claims. (See 37 CFR 1.142, MPEP 802). So, it is less likely to have the above issues.