Ms. Xia LIU, Patent Attorney

 

Divisional applications, a remedy to address the unity problems or defects in patent applications, are specified in detail in China's patent system. Appropriately utilizing the divisional application system facilitates full and flexible protection of innovators’ legitimate rights and interests, and strengthens applicants’ protection of their intellectual property rights.

Under Article 31 of the newly revised Chinese Patent Law, an invention or utility model patent application shall be limited to one invention or utility model; two or more inventions or utility models belonging to one general inventive concept can be filed as one application.

And, under Rule 42 of the current Implementing Regulations of Patent Law (hereinafter referred to as the Implementing Regulations), where a patent application includes two or more inventions, utility models or designs, the applicant may file a divisional application with the Patent Administration Department of the State Council before the expiry of the time limit specified in Rule 54, Paragraph 1, of the Implementing Regulations; however, if the patent application has been rejected, withdrawn or deemed to be withdrawn, the divisional application shall not be filed.

In the examination practice in China, divisional applications are usually of two categories: those filed passively and filed actively. The former refers to those filed by applicants to overcome the unity defect pointed out in office actions; and the latter those by applicants actively without receiving any office action pointing to the unity defects.

Wisely seizing opportunities to proactively divide applications will benefit applicants in many ways.

Applicants can utilize divisional applications to rectify defects arising from drafting of application documents, and protect the inventions that are described only in the specification but not presented in the claims. Where several inventions are disclosed in the specification of the original application, but only a few of them are claimed for various reasons in the claims of the original application, new claims may be drafted and divisional applications filed after the original application is filed or when the examination proceeds on the basis of the content of other inventions disclosed in the specification of the original application.

Example 1: The original application discloses multiple embodiments of displays with different configurations, but only one embodiment can be protected in the claims as a result of the required unity. In a case like this, the applicant can file a divisional application based on the other embodiments of the display before the original application is closed.

Example 2: The original application discloses an optical system and an optical sensor used in the optical system, but only the optical system is claimed in the claims of the original application. Now, the applicant can file a divisional application based on the optical sensor used in the optical system before the original application is closed.

Example 3: The original application discloses a device B containing material A, and a method for manufacturing device B containing material A, but the claims of the original application only claims  device B and the method for manufacturing device B. Then, the applicant can file a divisional application based on material A and the method used to manufacture material A before the original application is closed.

Besides, applicants can also use divisional applications to reasonably change or expand the scope of patent protection claimed.

Situation 1: The independent claims of the original application include features A, B and C. During the examination of the original application, the applicant found that feature B in the independent claim was not a necessary technical feature.

Under the provisions of Section 5.2.1.3 of Chapter 8 in Part Two of the Guidelines for Patent Examination as of 2020, actively or voluntarily deleting technical features in the independent claims would expand the scope of protection of the claims. For example, the applicant voluntarily deletes technical features from the independent claims, or voluntarily deletes a related technical term, or voluntarily deletes technical features that limit the scope of specific application, even if the content of the voluntarily modified content does not exceed the scope of what is presented in the original specification and claims, so long as the amendment results in the expansion of the scope of the claims, such amendments will not be accepted.

In this case, the applicant cannot voluntarily delete feature B in the independent claims of the original application. Then, the applicant can draft a new independent claim and file a divisional application based on the technical solution including features A and C before the original application is closed.

Situation 2: The independent claim of the original application includes the feature "coil spring", and the specification of the original application states that the coil spring is only one embodiment and can be replaced with other elastic components.

During the examination, the applicant hopes to amend the feature "coil spring" in the independent claim into "elastic components" to obtain a greater scope of the claimed protection. However, under the above-mentioned provisions of the Guidelines for Patent Examination, such amendments are an active change of the technical features in the independent claims, leading to an expansion of the scope of protection claimed. Even if the content of the amendment does not exceed the scope of the original specification and claims, it cannot be regarded as a rectification of the defects pointed out in the OA, because this rectification or amendment expands the scope of protection as claimed, and is therefore not accepted.

In this case, the applicant can draft independent claims and file a divisional application based on the technical solution featuring "elastic components" before the original application is closed.

When preparing a divisional application, an applicant usually needs to pay attention to the following matters:

1. Time limit for filing divisional applications

Under Rule 42, paragraph one, of the Implementing Regulations, so long as the patent application is "pending", the applicant is allowed to file a divisional application.

The "none-pending" status means that the patent application has been allowed, rejected, or withdrawn. Specifically, the applicant needs to file a divisional application within two months from the date of receipt of the notice of allowance, or within three months from the date of receipt of the rejection decision/re-examination decision, or within two months from the date of receipt of the notice of withdrawal. It is worth noting that if the applicant submits a reexamination request after receiving a rejection decision so that the original application enters the reexamination procedure, the applicant can file a divisional application during the reexamination procedure. In addition, if the applicant is not satisfied with the reexamination decision and files an administrative lawsuit, the applicant is also allowed to file a divisional application during the administrative lawsuit.

If, after a divisional is filed, the applicant wishes to file a divisional application again for the divisional application, the time to file the further divisional application still needs to meet the time limit for filing the divisional application discussed above, which is calculated according to the initial parent application. It is worth noting that where the examiner issues a Notification to Make Divisional, or an Office Action raising unity objection, even if the time limit for filing a divisional application for the initial parent application has expired, the applicant will be still allowed to file a further divisional application when the current divisional application is pending.

2. Type of divisional applications

Under Rule 42 of the Implementing Regulations, a divisional application shall not change the type of the original application. That is, if the original application is an invention application, the divisional application should also be an invention application; if the original application is a utility model application, the divisional application should also be a utility model application.

3. Content of divisional application

Under Rule 43 of the Implementing Regulations, a divisional application shall not exceed the scope disclosed in the parent application. Therefore, when drafting the claims of a divisional application, the applicant should note that the features defined in the claims must be clearly stated in the original application documents, or can be directly and unambiguously derived from the initial disclosure of the parent application documents.

For the content of the claims and specification of the divisional application, see the relevant provisions of Section 3.2 of Chapter 6 in Part Two of the Guidelines for Patent Examination as of 2020:

The claims of the original application after the division and the divisional application shall separately claim different inventions; and it is allowable for their specifications to fall into different circumstances. For example, before division, an original application had two inventions A and B; if the claims of the original application, after division, claim A, the specification can still be A and B, or only A; if the claims of the divisional application claim B, the specification can still be A and B, or only B.

When preparing the claims for a divisional application, the applicant should include the subject matter he seeks to protect in the claims. If the applicant claims subject A in the claims of a divisional application, and later changes it into subject matter B in order to overcome the novelty/inventiveness defects pointed out by the examiner, the revised subject matter B will be deemed to be lacking unity with the originally claimed subject matter, so will not be acceptable.

As a case in point, in a divisional application for a new bicycle handlebar, the specification describes not only the new handlebar, but also other components such as the bicycle seat, however, the applicant only claims the new handlebar in the divisional application. Through substantive examination, the new-style handlebar of the claims is found to fail to possess inventiveness. In this case, if the applicant makes a voluntary amendment to limit the claim to the bicycle seat, the examiner will not accept it for lack of unity between the revised subject matter and the subject matter originally claimed.

In practice, when a divisional application is filed, the specification is usually not substantively revised, but the claims are revised to differ from the parent application.

Filing a divisional application at appropriate time according to specific needs is an important method in the patent application strategy. The appropriate use of the divisional application system will enhance the applicant's patent protection and market response capabilities, and increase the market value of their patent applications.