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Utilization of divisional applications during the prosecution stage (2021.03.24)

Wilson Cheng

I. Overview

After an applicant files a patent application in Taiwan, the claims of the patent application are examined after a substantial examination request is filed. The applicant may need to file one or more divisional applications for some of the original claims if the unity requirement is not satisfied. In addition, the applicant may want to file a divisional application for another set of claims which is not introduced in the parent application. Therefore, whether to file a divisional application is an important consideration for the applicant.

II. Time periods for filing a divisional application

An applicant may file a request for a divisional application within any of the following time periods:

before a reexamination decision on the original patent application is rendered; or

within three months after the date on which an approval decision upon Primary Examination and Reexamination for the original patent application is served.

Therefore, the applicant may file a divisional application when a parent application is still pending in the Taiwan Intellectual Property Office (TIPO). Even if the parent application is allowed, the applicant may file a divisional application within three months after receiving an approval notice of the parent application. However, if the parent application is rejected in the Primary Examination, the applicant cannot file a divisional application. The applicant should first file a reexamination request and then a divisional application can be filed.

If the parent application is still pending, the claims of the divisional application may be divided from the claims of the parent application or a new set of claims based on the disclosure of the parent application may be submitted. However, if the parent application is allowed, the claims of the divisional application should consist of a new set of claims based on the disclosure of the parent application, and all claims of the new set of claims should be different from any of the allowed claims to avoid double patenting.

III. Occasions for filing a divisional application

A patent applicant may file a divisional application based on the examination report of a patent application or the applicant’s commercial consideration, including its own product or a competitor’s product. The applicant may file a divisional application under the following circumstances.

1. An examination report shows the claims do not meet the requirement of unity:

When an examiner examines the claims including more than one independent claim, he/she will select the special technical feature among the independent claims. The special technical feature refers to the technical feature which defines a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. That is, the special technical feature is a technical feature that endows the claims with novelty and inventiveness. If the examiner issues an examination report indicating that the claims do not have corresponding special technical features compared with the prior art and do not meet the requirement of unity, the applicant may divide and file a portion of the claims in one or more divisional applications if each of the independent claims is inventive over the prior art. However, if an examination report shows that the claims do not have corresponding special technical features compared with the prior art and one of the independent claims is not inventive over the prior art, the applicant should overcome the inventiveness issue first and then consider the unity issue.

2. Another approach to amend the claims in response to an examination report

After receiving an examination report regarding the inventiveness issue, the applicant has several options to narrow the claims. If the applicant considers that two kinds of claim amendments are equally important, because the applicant can only enter one kind of claim amendment to the TIPO for an application, the applicant may file one claim amendment in the parent application, and further file a divisional application for the second kind of claim amendment during prosecution or within three months after receiving an approval notice of the parent application.

3. Expedite allowable claims to be granted

Examination reports sometimes indicate that some of the claims are allowable while others are not. The applicant may keep the allowable claims in the parent application and divide the unallowable claims into a divisional application to further argue for patentability. This measure ensures that the allowable claims in the parent application are granted earlier.

4. To claim inventions not claimed in the parent application

The applicant may want to add new claims into the parent application. If an Official Letter has not been issued or the time window for a response designated in an Official Letter has not lapsed, the applicant may add new claims to the claims in the application if the inventions in the new claims are disclosed in the specification and drawings. But if the application has been allowed, the applicant can only file a divisional application for new claims within three months after receiving an approval notice for the parent application.

5. Adapt the scope of the claims to cover a newly-changed product

The prosecution procedure of a patent application may last for several years especially if the substantial examination request for the application is filed close to the deadline of three years from the filing date. The scope of the claims sought to be protected may change after a couple of years, so the applicant may file a divisional application for new claims sought to be protected if it is not a suitable time to add new claims into the current application or the current application has been allowed and an approval notice was received no more than three months ago.

6. Broaden the scope of the claims to cover a competitor’s product

The scope of the to-be-examined or allowed claims of an application may not cover a competitor’s product. Because the filing date of a divisional application is recognized as the filing date of its parent application, this is very advantageous to extend the prosecution life of a parent application of an earlier filing date by filing a divisional application and filing another divisional application from the divisional application, etc. if the content of the claims of the divisional applications is disclosed in the specification and drawings of the parent application. Therefore, the applicant may monitor the competitor’s product and file a divisional application to cover the scope of the competitor’s product even if the parent application has been granted. Such measure can effectively hinder the competitor to enter the technical field of the applicant’s product.

7. Broaden the scope of the claims to cover the claims of a competitor’s patent application

The applicant may want the claims of the parent application to cover the claims of the competitor’s patent application. In this case, the applicant should monitor the published pending claims of the competitor’s patent application and any claim amendment. Then the applicant may amend the claims of the pending parent application or a divisional application to cover the claims of the competitor’s patent application. This will be very beneficial in a subsequent lawsuit. However, the applicant should keep at least one application pending by filing divisional application(s).

IV.  Conclusion  

Filing a divisional application is not only a good strategy to respond to an Official Letter during the prosecution stage but also worthwhile to extend the time period of prosecution to cover subsequent changes of his/her own product in addition to the competitor’s product. Strategic utilization of divisional applications is very helpful for patent deployment.

  

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