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Can Examiner be Changed in the Divisional Application?
Peter ZHANG
PATENT ATTORNEY
LINDA LIU & PARTNERS
In China’s patent practice, usually there are two circumstances involving divisional application. The first circumstance is that when the examiner points out the claims lack unity in the Office Action, the applicant files divisional application passively in order to protect the technical solution deleted from the original application.. Another circumstance is that the applicant files divisional application actively before the closure of the original application. Usually, the filing of divisional application actively has two purposes. The more common one is to write new claims for the divisional application so as to acquire patent with different scope of protection, while the less common one is to be assigned with new examiner in the divisional application through which the applicant’s argument may be accepted by the new examiner.
However, can examiner be changed when filing divisional application? Neither the Patent Law nor the Guidelines for Patent Examination does have an answer for this question. We made a survey based on the office actions on invention patent divisional applications we received during a certain period. We received 80 first office actions in total within that period. Among them, the examiners in 13 divisional applications were the same as those of the original applications. That is to say, according to our data, examiners remained the same in 16% (13/80) of the divisional applications and in 84% (67/80) of the divisional applications, the examiners have been changed.
In addition, we learned from the examiners of the State Intellectual Property Office (SIPO) that, 100% of the divisional applications for designs would be assigned to the examiners of the original application. As for inventions and utility models, the divisional applications, like other new applications, would be distributed randomly to the examiners by the computer system of SIPO according to the fields of technology. But if one examiner is assigned to a divisional application, he may request to transfer the application to the examiner of the original application, and generally the original examiner would accept the transfer. However, the above practice is not mandatory. We could see from our survey that in practice, many examiners do not transfer the divisional applications to the examiners of the original application.
Meanwhile, we also learned some unfavorable news to the applicants who expect to change the examiner in divisional application. According to the introduction of one examiner who has involved in policy making, in order to improve efficiency and keep consistency in examination, SIPO is now studying to set up internal rules in order to have the divisional applications assigned to the examiner of the original application.
In our opinion, we still believe divisional application is relatively an efficient way to change examiners for now. We will certainly follow up the internal rules of SIPO and if there is any update, we will let you know timely.
