Why the Best Patent Strategy Doesn’t Stop at Allowance

The USPTO recently announced a procedural change: starting May 13, 2025, the time between a patent’s Issue Notification and the official Grant Date will be reduced from approximately three weeks to two.

On the surface, this may seem like a minor adjustment, but for companies that rely on continuation practice as part of their patent strategy, it’s a meaningful one. The change tightens the window during which a continuation application can be filed and underscores the importance of planning early and executing carefully.

Understanding Continuation Practice in Context

A continuation application allows a patent applicant to pursue additional or modified claims based on the same disclosure as a previously filed, still-pending U.S. patent application. The continuation must be filed before the parent application issues as a patent, and it claims the benefit of the parent’s filing date.

Continuation practice is commonly used to:

• Protect disclosed but unclaimed embodiments or use cases
• Broaden or refocus claim scope in light of commercial developments
• Maintain a pending application in the family for future flexibility
• Strategically stage prosecution to align with business or litigation needs

A single patent application often can’t, or shouldn’t, claim everything at once. Continuations give applicants the ability to develop the claim set over time.

Strategic Use of Narrow Claims and Continuations

Often, it’s in the applicant’s interest to accept a narrower claim set to expedite allowance and obtain a granted patent, particularly when timing is critical for business, licensing, or enforcement reasons. A concurrently filed continuation preserves the right to pursue broader protection later.

This dual-track approach allows:

• A patent to issue quickly
• A separate application to remain pending, pursuing broader or alternative claims

It’s not a fallback. It’s a forward-looking strategy that creates both certainty and flexibility.

Late-Stage Continuations: More Flexibility, Less Time

The USPTO has long recommended that applicants file continuation applications before paying the issue fee, and this remains a best practice. It avoids last-minute issues and ensures the application is filed well before the parent issues.

However, in practice, many applicants choose to wait until after the Notice of Allowance, using the post-allowance period to finalize strategy, assess competitive developments, or simply defer costs. Filing just before issuance allows them to delay examination and keep the patent family pending longer, preserving flexibility at a lower cost.

That approach is still valid, but now comes with greater risk. With the window between Issue Notification and patent grant shrinking from three weeks to two, applicants who wait to file until after paying the issue fee will need to monitor timelines even more closely. The shortened timeframe reduces the margin for error, especially when filings depend on internal reviews, stakeholder approvals, or external coordination.

Final Thoughts

Continuation filings are a fundamental tool for building a strong and adaptable patent portfolio. They allow businesses to shape claim coverage over time, respond to new developments, and preserve future rights that might otherwise be lost.

The USPTO’s timing change doesn’t eliminate that flexibility, but it tightens the window in which it must be exercised. If continuation strategy isn’t already baked into your IP process, now is the time to revisit your approach.

If you’d like help reviewing your patent portfolio or planning continuation filings, please be in touch.