Continuation-in-Part Applications Not Covered in Assignments
The Federal Circuit held that a 2007 patent assignment did not cover continuation-in-part (CIP) applications.
The assignment referenced “divisions, reissues, continuations, and extensions,” but did not mention CIPs.
Relying on standard contract principles, the court refused to insert terms the parties did not include.
The Distinction Between Continuation and Continuation-in-Part Applications
The panel emphasized that continuations and CIPs are distinct under long-settled patent law. Continuations cannot add new matter, while CIPs can. That difference carries real legal and practical consequences for ownership and recordation.
The Singular Exception in UNM v Knight
The court contrasted its decision with University of New Mexico v. Knight (2003). In Knight, similar language was held to include CIPs. The panel distinguished that case because additional agreements transferred “all related patents.”
Potential Gamesmanship of the Decision
Some commentators described the analysis as clear but overly formalistic. They argued it ignored functional concerns, including potential gamesmanship. A drafter could add minimal new material, file a CIP, and shift ownership.
In the end, the ownership dispute did not matter. A companion IPR proceeding had already invalidated the relevant patent claim for obviousness.
For additional information on Continuation and Continuation-in-Part patent applications, see our FAQ section on Patent Prosecution, with the questions addressed towards the bottom of the page.