▍ Patent practice - Filing Divisional Applications in China

Jun | Apr 28 2022

During the process of patent examination, many applicants are required to revise their applications on the ground of lacking unity of invention, because the examiner decides that the application contains multiple inventions. Under such circumstances, the applicant may file divisional applications per the examiner’s requests. The initial patent application will thus be divided into two or more applications in order to meet the unity requirement, and these divisional applications may retain the initial application filing date. The priority date may be retained as well if priority had been claimed in the initial application.

Filing a divisional application is a fairly common practice for patent filing in China. Some relevant requirements and rules have been summarized below for reference:

1.Types of Divisional Applications

There are two main types of the divisional application. One is the involuntary divisional application (mentioned above). This type of divisional application is generally required due to the examiner pointing out unity defects in the initial application.

The other type is the voluntary divisional application. Even when a unity defect is not raised by the examiner, an applicant may still file divisional applications voluntarily, usually as a patenting strategy. For example, when an applicant and an examiner have differing opinions regarding certain claims, the applicant can delete the debatable claims and have the allowable claims granted, in order to occupy the market as quickly as possible. The applicant can later pursue the deleted claims via filing divisional applications.

Needless to say, there are many other reasons and strategies for filing divisional applications. You are always welcome to contact our patent attorneys at Jiaquan IP Law Firm for additional information and further discussion. We would be happy to provide you with a customized patent application strategy.

2.Requirements for Filing a Divisional Application

When a single patent application is deemed to include multiple inventions, the applicant may file divisional applications up until two months after the receipt date of the initial application’s Notice of Allowance. This means that the divisional application should be filed with the following five preconditions:

1)The initial application must contain two or more utility inventions, utility models, or designs.

2)The deadline to file a divisional application is two months following the receipt date of the initial application’s Notice of Allowance. After this deadline, the applicants will have automatically waived their right to file a divisional application.

3)No divisional applications may be filed if the initial patent application has been rejected, withdrawn, or deemed to be withdrawn.

4)If the examiner finds that filed documents of the initial patent application do not conform to existing patent laws and rules, the examiner will request that the applicant amend the application within a specified time limit. If the applicant fails to respond appropriately within this time limit, no divisional application may be filed.

5)Divisional applications cannot change the initial application’s patent type.

3.Schedule for Filing a Divisional Application

When filing divisional applications, timing is critical. Missing a deadline often results in applicants losing the opportunity to file a divisional application.

Pursuant to Article 42 of the Implementing Regulations of the Chinese Patent Law, the time limit for filing divisional applications depends upon the status of the initial application itself.

1)If certain claims are allowed, a divisional application must be filed prior to the deadline defined in Article 54 of the Implementing Regulations. Accordingly, the applicant may file divisional applications within two months from the receipt date of the Notice of Allowance for the initial application.

2)If the Notice of Allowance for the initial application has not been issued, divisional applications may be filed at any time, provided that the initial application has not been rejected, withdrawn, or deemed to be withdrawn.

In summary, so long as the initial application is pending, divisional applications may be filed voluntarily or involuntarily, during any time between the filing date and closing date of the initial application. Furthermore, the applicant may also file divisional applications (based upon the initial application) after filing a request for reexamination or during the administrative lawsuit (if the applicant is dissatisfied with the reexamination decision).

APPENDIX: Types and Time Limits for Divisional Applications