What is a Divisional Patent Application?

Understanding Divisional Patent Applications: A Comprehensive Guide

In the complex world of intellectual property, divisional patent applications play a crucial role in protecting multiple inventions disclosed in a single patent application. This comprehensive guide will explore the concept of divisional applications, their purpose, importance, and strategic considerations in various patent systems.

 

Verna Law, P.C. is an intellectual property law firm with a patent practice.  If you have questions about your invention or patent application, call us at 914-908-6757 or send an e-mail to anthony@vernalaw.com.

 

What is a Divisional Patent Application?

A divisional patent application is a type of further application derived from a parent patent application. It is filed when the original application contains a plurality of inventions, and the patent office requires the applicant to limit the claims to a single invention or a group of inventions that form a single inventive concept.

 

Key Features of Divisional Applications

1. Separate Applications: Divisional applications are separate from the parent application but retain the filing date of the original application.
2. Unity of Invention: They address the requirement for unity of invention, which stipulates that a patent application should relate to only one invention or a group of closely related inventions.
3. No New Subject Matter: Divisional applications cannot introduce new subject matter beyond what was disclosed in the parent application.

The Purpose of Divisional Patent Applications

Divisional patent applications serve several important purposes in the patent system:

1. Protecting Multiple Inventions: When a single patent application discloses multiple inventions, divisional applications allow inventors to seek protection for each distinct invention.
2. Compliance with Patent Office Requirements: Many patent offices, including the United States Patent and Trademark Office, require that a patent application be limited to a single invention or a group of inventions that share a single inventive concept.
3. Responding to Restriction Requirements: In the United States, divisional applications are often filed in response to a restriction requirement issued by the patent examiner during the examination process.
4. Strategic Patent Portfolio Development: Divisional applications can be used to build a comprehensive patent family, protecting various aspects of an invention or group of inventions.

Filing a Divisional Patent Application

Reasons for Filing

1. Restriction Requirement: In the United States, a divisional application is often filed in response to a restriction requirement issued by the patent examiner in an office action. This occurs when the examiner determines that the original application contains claims to two or more independent and distinct inventions.
2. Voluntary Division: In some jurisdictions, applicants can voluntarily file divisional applications to protect different aspects of their invention, even without an official objection from the patent office.
3. Lack of Unity of Invention: When the patent office determines that the application lacks unity of invention, meaning it contains multiple inventions that do not form a single inventive concept, a divisional application may be necessary.
4. Strategic Reasons: Applicants may choose to file divisional applications to:
   • Defer costs of obtaining multiple patents
   • Maintain pending applications while equivalent applications in other jurisdictions are still being prosecuted
   • Retain flexibility to amend claims based on commercial objectives or ongoing negotiations
5. Overcoming Breadth Issues: When the scope of the original application is too broad or the claims too diverse for adequate examination in a single application, divisional applications can help focus the examination process.

Timing and Process

• Divisional applications must be filed before the grant of the patent on the parent application.
• The claims of the divisional application must be supported by the complete specification of the parent application.
• In many jurisdictions, including the United States Patent and Trademark Office, cascading divisionals are allowed, meaning a divisional application can itself be a parent to subsequent divisionals.

Divisional Applications in Different Patent Systems

United States Patent System

In the U.S. patent system, divisional applications are considered a type of continuing application and are often filed in response to a restriction requirement. Key features include:

• Divisional applications claim only subject matter disclosed in the parent application but not claimed in that application.
• They are often filed in response to a restriction requirement issued by the USPTO examiner.
• The filing date of the divisional application is the same as that of the parent application, preserving priority rights.
• Multiple divisional applications can be filed from a single parent application.

Indian Patent System

Under the Indian Patents Act, divisional applications can be filed:

1. In response to an objection by the Controller of Patents regarding unity of invention.
2. Voluntarily by the applicant before the grant of the patent.

The Indian patent system allows for the filing of divisional applications under Section 16 of the Indian Patents Act. Key points include:

• Divisional applications can be filed at any time before the grant of the patent if the applicant desires to claim a distinct invention disclosed in the parent application.
• The Controller of Patents may require division if they believe the claims relate to more than one invention.
• The divisional application will be examined separately but will have the same priority date as the first mentioned application (parent application).

European Patent Convention

The European Patent Office (EPO) allows divisional applications under Article 76 of the European Patent Convention (EPC), treating them as new applications separate from the parent application. Important aspects include:

• Divisional applications can be filed as long as the parent application is pending.
• They are subject to the same requirements as any other European patent application.
• The divisional application cannot extend beyond the content of the earlier application as filed.
• The EPO has strict rules regarding the filing of sequential divisionals (so-called “cascading divisionals”).

The Process of Filing a Divisional Patent Application

1. Identifying the Need: The need for a divisional application may arise from a restriction requirement in an office action or from the applicant’s desire to protect multiple inventions.
2. Preparing the Application: The divisional application must include:
   • A copy of the specification and drawings from the parent application
   • A new set of claims directed to the invention being divided out
   • A reference to the parent application
3. Filing the Application: The divisional application is filed with the patent office, usually before the grant of the parent patent.
4. Examination: The divisional application undergoes its own examination process, separate from the parent application.
5. Prosecution: The applicant responds to office actions and may amend claims as needed during the examination process.
6. Grant: If approved, the divisional application will be granted as a separate patent.

Strategic Considerations for Divisional Patent Applications

1. Patent Portfolio Building: Divisional applications can be used to create a comprehensive patent family, protecting various aspects of an invention or group of related inventions.
2. Avoiding Double Patenting: Care must be taken to avoid double patenting issues, especially in jurisdictions like the United States. This may require filing terminal disclaimers in some cases.
3. Scope of Protection: Divisional applications allow applicants to pursue different claim scopes, potentially broadening the overall protection for their inventions.
4. Cost Management: While divisional applications can increase overall patent costs, they can also be used strategically to defer costs by maintaining pending applications.
5. Timing Considerations: The timing of divisional filings can be crucial, especially in relation to the prosecution of the parent application and potential prior art cutoff dates.
6. International Strategy: Divisional strategies may vary across different patent systems, requiring careful coordination in global patent portfolios.

Limitations and Considerations

No New Subject Matter

One of the most critical aspects of divisional patent applications is that they cannot introduce new subject matter not disclosed in the parent application. This limitation is fundamental to the concept of divisional applications and is strictly enforced by patent offices worldwide. Key points include:

• A divisional application can only claim subject matter that was disclosed in the parent application. It must be “carved out” of the parent application and claim only what was already disclosed there.
• The divisional application should set forth at least the portion of the earlier disclosure that is relevant to the invention being claimed in the divisional.
• No new matter can be added in a divisional application. As stated in the Manual of Patent Examining Procedure (MPEP), “the disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application”.
• The claims of a divisional application must be supported by the original specification of the parent application. They cannot introduce any new subject matter beyond what was originally disclosed.
• Divisional applications are intended to protect multiple inventions disclosed in a single parent application or to respond to a lack of unity objection. They are not meant as a way to add new inventions or subject matter.

Unity of Invention

The concept of unity of invention is central to the need for divisional applications. Patent offices generally require that a single patent application be directed to a single invention or a group of inventions so linked as to form a single general inventive concept. When this requirement is not met, a divisional application may be necessary.

Priority Rights

Divisional applications retain the priority date of the parent application for the subject matter disclosed in the parent. This is crucial for establishing the invention’s place in the prior art landscape.

Continuation vs. Divisional Applications

In some patent systems, particularly the United States, it’s important to distinguish between continuation applications and divisional applications:

• Continuation applications are used to pursue additional claims to the same invention.
• Divisional applications are used to pursue claims to a different invention disclosed in the parent application.

Best Practices for Filing Divisional Patent Applications

1. Thorough Initial Disclosure: Ensure that the parent application provides a comprehensive disclosure of all potential inventions and embodiments. This provides a solid foundation for future divisional applications.
2. Strategic Claim Drafting: In the parent application, consider drafting claims that might trigger a restriction requirement if desired, to keep options open for divisional filings.
3. Timely Filing: Be aware of deadlines for filing divisional applications, which typically must be filed before the grant of the parent patent.
4. Careful Claim Differentiation: Ensure that the claims in the divisional application are clearly distinct from those in the parent application to avoid double patenting issues.
5. Consistent Disclosure: Maintain consistency in the description of the invention across the parent and divisional applications to avoid introducing new matter.
6. Global Strategy Alignment: Coordinate divisional filing strategies across different jurisdictions to ensure comprehensive global protection.
7. Regular Portfolio Review: Continuously assess the patent portfolio to identify opportunities for strategic divisional filings.

The Future of Divisional Patent Applications

As patent systems evolve and technology becomes increasingly complex, the role of divisional applications in patent strategy is likely to grow. Some trends to watch include:

1. Increasing Complexity of Inventions: As technologies become more interdisciplinary, the need for divisional applications to protect various aspects of complex inventions may increase.
2. Harmonization Efforts: Ongoing efforts to harmonize patent laws globally may impact the rules and procedures for divisional applications across different jurisdictions.
3. AI and Patent Drafting: The use of artificial intelligence in patent drafting and examination may influence how inventions are disclosed and how unity of invention is assessed, potentially affecting divisional application strategies.
4. Changes in Patent Office Procedures: Patent offices may continue to refine their approaches to restriction requirements and unity of invention, which could impact divisional filing strategies.

Conclusion

Divisional patent applications are a valuable tool in the intellectual property arsenal, allowing inventors and companies to protect multiple inventions or aspects of inventions disclosed in a single parent application. They provide a means to comply with unity of invention requirements while maximizing the scope of protection for complex technologies.Understanding the nuances of divisional applications across different patent systems is crucial for developing an effective global patent strategy. While they offer significant benefits in terms of expanded protection and strategic flexibility, divisional applications also come with challenges, including increased costs and the need for careful management to avoid issues like double patenting.As the technological landscape continues to evolve, the strategic use of divisional applications will likely become an increasingly important aspect of comprehensive patent portfolio management. Inventors, companies, and intellectual property professionals must stay informed about the rules and best practices surrounding divisional applications to fully leverage their potential in protecting valuable innovations.By carefully considering when and how to use divisional applications, innovators can build robust patent portfolios that provide comprehensive protection for their inventions, support their business objectives, and maintain a competitive edge in the global marketplace.

 

Verna Law, P.C. is an intellectual property law firm with a patent practice.  If you have questions about your invention or patent application, call us at 914-908-6757 or send an e-mail to anthony@vernalaw.com.