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Issues to be Noted with respect to Divisional Application
Xiaoxiang WANG
Chinese Patent Attorney
Linda Liu & Partners
In China, a divisional application is filed to comply with the requirement regarding unity prescribed by Article 31 of the Chinese Patent Law. Where a patent application contains two or more inventions, the applicant can file a divisional application on his own initiative or in accordance with the requirement by the examiner. Such a divisional application is that having a general meaning complying with the legislative intent. However, as there is no explicit stipulation as to the reasons or contents of the divisional application in the current Chinese patent laws, in practice, some divisional applications are filed on the applicant own initiative but not to satisfy unity, and the applicants are increasingly making use of divisional applications to seek for maximized interests. In this paper, we will discuss some issues to be noted with respect to divisional applications according to our practical experiences, in hope that it will be helpful for you to know more about divisional application – a powerful weapon for patent application.
1. Submission time of divisional application
1) Submission time of divisional application based on an initial application
As prescribed by Rule 42 of the Implementing Regulations of the Chinese Patent Law and the SIPO’s Guidelines for Patent Examination, Part I, Chapter 1, Section 5.1.1, the applicant shall file a divisional application no later than the expiration of two months (i.e., the time limit for going through the formalities of registration) from the date of receipt of the notification to grant the patent right to the initial application issued by the Patent Office. After the expiration of the above time limit, or where the initial application has been rejected, or the initial application has been withdrawn, or is deemed to have been withdrawn and the right has not been restored, no divisional application shall be filed in general. As for the initial application to which the examiner has issued the decision of rejection, the applicant may file a divisional application within three months from the date that the applicant receives the decision of rejection regardless of whether the applicant requests for reexamination or not. The applicant, after requesting for reexamination or during the initiation of the administrative litigation against the reexamination decision, may also file a divisional application.
In practice, a divisional application can be filed at any time before the expiration of the time limit of two months from the date of receipt of the notification to grant the patent right to the initial application. Even if the applicant goes through the formalities of registration before the expiration of the time limit, a divisional application can still be filed after the registration and within the two-month time limit in accordance with the above provisions. Despite that, according to our communication with some examiners and a practice that is generally accepted by the SIPO, it is advisable to file a divisional application before the registration or at the same time while going through the formalities of registration.
2) Submission time of another divisional application based on a divisional application
As stipulated in the SIPO’s Guidelines for Patent Examination, Part I, Chapter 1, Section 5.1.1, where an applicant files another divisional application based on an already filed divisional application, the submission time of another divisional application shall be examined according to the initial application, with the exception that another divisional application is filed by the applicant according to the Office Action made by the examiner due to a unity defect in the already filed divisional application.
That is, when the applicant files another divisional application based on a divisional application on his own initiative, the submission time is limited by the legal state of the initial application, while the submission time of a divisional application to be filed to remove a unity defect in the already filed divisional application indicated in an Office Action may not be limited by the legal state of the initial application.
The patent laws contain no explicit provision as to the submission time of a divisional application to be filed remove a unity defect in the already filed divisional application. According to our communication with some examiners and a practice that is generally accepted by the SIPO, it is advisable to file another divisional application based on a divisional application at the same time when submitting a response to an Office Action in which a unity defect is pointed out. If the applicant does not file a divisional application while responding to the Office Action, according to our experiences in patent agency, the applicant may file a divisional application no later than the expiration of two months (i.e., the time limit for going through the formalities of registration) from the date of receipt of the notification to grant the patent right to the already filed divisional application issued by the Patent Office.
2. Circumstances where a divisional application is filed on the applicant’s own initiative
In accordance with the current Chinese patent laws, restrictions to a divisional application include: the divisional application may not change the kind of protection of the initial application; the divisional application shall not go beyond the scope of the disclosure contained in the initial application. No further restriction is given with regard to the reason for the submission of a divisional application or the contents of a divisional application. Therefore, the applicant can subtly make use of a divisional application as needed so as to maximize his interests.
Circumstance 1): amendments to an application are limited.
In accordance with Rule 51.3 and Rule 61.1 of the Implementing Regulations of the Chinese Patent Law, after the occasion for making initiative amendment, any amendment to the application shall be made in answer to the defects pointed out by the notification issued by the examiner (or the collegiate panel). Moreover, as stipulated in the SIPO’s Guidelines for Patent Examination, Part II, Chapter 8, Section 5.2.1, and Part IV, Chapter 2, Section 4.2, where it is not beneficial to economize the examination procedure, even though the contents of the initiative amendment do not go beyond the scope of disclosure contained in the initial description and claims, the amendment shall not be deemed to be made in answer to the defects as indicated in the Office Action, therefore the amendment shall be unacceptable.
In some circumstances, for example, where the scope of protection of the claims of the initially filed application is too narrow, while a broader scope is disclosed in the description; where the description discloses more than one invention, but only several inventions among them are claimed by the claims, after the occasion for making initiative amendment, it generally is unacceptable to amend the technical features in the claims to enlarge the scope of protection, or to add new independent claims and dependent claims. In this case, the applicant could consider filing a divisional application on his own initiative to seek for a desired scope of protection.
Circumstance 2): it is necessary to adjust the scope of protection sought by the claims.
During the examination procedure of a patent application, the applicant possibly will make amendments to the claims to overcome various defects pointed out by the examiner. After these amendments, the technical solution of the finally patented claims perhaps is greatly different from what the applicant intends to protect, and it even fails to protect the invention to be protected as desired. In this case, the applicant could consider filing a divisional application claiming a desired scope of protection before the closure of the initial application.
In view of the current Chinese patent laws, the claims of a divisional application even may be completely identical with those of the initially filed application. This is not expressly forbidden in accordance with the patent laws, even though it is stipulated in the SIPO’s Guidelines for Patent Examination that the divisional application shall claim an invention different from that claimed by the initial application. Moreover, after substantive examination, it is unlikely that the claims of the divisional application have a scope of protection the same as that of the initial application.
Advantages of filing a divisional application having completely the same claims as those of the initial application are as follows: firstly, examination on the divisional application is conducted later than the initial application, and the SIPO’s examination standard may slightly change with the time going by; secondly, it is objective that different examiners may hold different examination standards; and thirdly, during the examination of the divisional application, the applicant can make amendment or argument in light of a currently desired scope of protection, so as to obtain a desired scope of protection.
Circumstance 3): it is necessary to make an application patented as soon as possible.
Initiative submission of a divisional application is helpful for the initial application (the parent application) to be granted a patent right as soon as possible. For instance, for a patent application having three independent claims, the examiner pointed out in the first Office Action that independent claim 1 and its dependent claims lack an inventive step but did not point out any defect involved by the other claims, to respond to the first Office Action, it is possible to delete claim 1 and its dependent claims and retain the rest two independent claims and their dependent claims that were not commented by the examiner, and file a divisional application for the deleted claims, thereby making it possible that the parent application is granted a patent right as soon as possible. In this way, the applicant not only can get a patent right earlier but also achieve a scope of protection as large as possible.
From the aforesaid three circumstances as examples, it can be seen that initiative submission of a divisional application at the right time makes it possible to achieve a desired protection effect. Although this behavior may not comply with the legislative intent with respect to divisional application, and the SIPO has noticed this behavior so far, we think it is reasonable to some extent because a divisional application itself is deemed as a new application and various fees for it are charged as well. In fact, submission of a divisional application is equivalent to obtaining interests that should have been obtained but are not obtained for some reasons, by paying the price.
3. Other issues to be noted
1) Amendment going beyond the scope of the initial application
Although it is possible to seek for more favorable protection on the applicant’s invention by filing a divisional application on the applicant’s own initiative, please be kindly noted that, according to some cases we have dealt with, the SIPO at present holds very rigorous examination standards as to whether the divisional application goes beyond the scope of the initial application. In addition to the stipulation that each feature in the claims shall not be a generalization based on the description, the technical solution in the claims shall not be a technical solution obtained by generalization from the description. That is, even if each technical feature in the claims is supported by the description, a divisional application will be deemed to go beyond the scope of the initial application if the technical solution as a whole is not disclosed in the original application or if the technical solution as a whole is not contained in one embodiment but is obtained by generalization from more than one embodiments in the description of the initial application.
Thus, it is advisable to write all the inventions into the claims while drafting an application, even if these inventions obviously lack unity. A divisional application generally will not go beyond the scope of the initial application as long as the technical solutions are present in the claims of the initial application. If the applicant does not want to write all the inventions into the claims of the initial application, it is possible to disclose technical solutions of all the inventions in the part of Summary of the Invention and make explanation in the part of the detailed embodiments in the description, so as to avoid an amendment going beyond the original scope caused due to rewriting of the claims of a subsequent divisional application.
2) Divisional application based on an international application entering into the Chinese national phase
As stipulated in the SIPO’s Guidelines for Patent Examination, Part I, Chapter2, Section 15.2.2, and Part III, Chapter 2, Section 5.5, as for the invention(s) or utility model(s) deleted due to failure to pay the restoration fee for unity by the applicant, the applicant shall not request for divisional application(s).
In a case where the International Authority made a decision that the inventions lack unity and it is confirmed that this decision is correct, if the international application entering into the Chinese national phase contains any invention-creation which has not been conducted international search or international preliminary examination in the international phase, or contain any invention-creation which has been abandoned by the applicant in the international phase, the applicant, after receiving the Notification to Pay Restoration Fee for Unity, needs to carefully consider whether these invention-creations should be retained or deleted. If the applicant does not pay the restoration fee for unity within two months from the date of receiving this notification, the applicant will be required to delete these invention-creations and shall not request a divisional application for them any longer.
In view of the above discussion, under the prevailing Chinese patent laws, divisional application can be used to seek for more favorable protection on invention-creations, while it is necessary for the applicant and the agent to make complete preparation for this when filing an application.
