Divisional patent application

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A divisional patent application, also called divisional application or simply divisional, is a type of patent application that contains subject-matter from a previously filed application, the previously filed application being its parent application. [1] While a divisional application is filed later than the parent application, it retains its parent's filing date, [1] and will generally claim the same priority. Divisional applications are generally used in cases where the parent application may lack unity of invention; that is, the parent application describes more than one invention and the applicant is required to split the parent into one or more divisional applications each claiming only a single invention. The ability to file divisional applications in cases of lack of unity of invention is required by Article 4G of the Paris Convention. [2]

Contents

Practice by jurisdiction

The practice and procedure of filing a divisional patent application vary from jurisdiction to jurisdiction. In most countries, the filing of divisional applications is possible at least as long as the parent patent applications are pending. Since 2013, the European Patent Office rules are again in line with the current practice before the patent offices in the U.S., Germany, and Japan. [3]

European Patent Convention

Before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC. A European divisional application is a new application which is separate and independent from the parent application unless specific provisions in the European Patent Convention (EPC) require something different. [4]

"The procedure concerning the divisional application is in principle independent from the procedure concerning the parent application and the divisional application is treated as a new application... Although there are some connections between the two procedures (e.g. concerning time limits), actions (or omissions) occurring in the procedure concerning the parent application after the filing of the divisional application should not influence the procedure concerning the latter...." [5]

The practice relating to the filing of divisional applications under the EPC was clarified by the Enlarged Board of Appeal of the EPO in June 2007. The Board held that a divisional application which on filing contained subject-matter extending beyond the content of the earlier application as filed could be amended later to remove the deficiency, even at a time when the earlier application is no longer pending. [6]

United States

In the United States, a divisional application is defined as a specific type of continuing patent application. [7] A later application for an independent or distinct invention, carved out of an earlier-filed patent application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application. [7] In many non-U.S. jurisdictions, however, the term “divisional” is often used more broadly to refer to continuing applications in general, encompassing concepts that may differ from the U.S. definition.

A divisional application is often filed as a result of a restriction requirement made by an examiner. [7] A restriction requirement may be issued if two or more independent and distinct inventions are claimed in a single application. [8] [9] In such cases, the examiner may require the application to be restricted to one of the independent inventions. [8] [9] Thus, a restriction requirement may require an applicant to divide a single patent application into multiple separate applications. U.S. law provides protection for divisional applications against double patenting rejections [10] and invalidation of the resulting patents based on double patenting grounds.

Cascade of divisionals

If a divisional application is filed based on a patent application that is already a divisional application, the newly filed divisional is a second-generation divisional, and so on, "thereby creating a cascade of divisionals". [11]

See also

Related Research Articles

<span class="mw-page-title-main">European Patent Convention</span> International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

Prior art is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria for patentability. In most systems of patent law, prior art is generally defined as anything that is made available, or disclosed, to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. However, notable differences exist in how prior art is specifically defined under different national, regional, and international patent systems.

In patent law, industrial design law, and trademark law, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

In a patent or patent application, the claims define in technical terms the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. The claims particularly point out the subject matter which the inventor(s) regard as their invention. In other words, the purpose of the claims is to define which subject matter is protected by the patent. This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid infringement liability. The claims are of paramount importance in both prosecution and litigation.

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.

There are two provisions in the regulations annexed to the Patent Cooperation Treaty (PCT) that relate to the search and examination of patent applications concerning computer programs. These two provisions are present in the PCT, which does not provide for the grant of patents but provides a unified procedure for filing, searching and examining patent applications, called international applications. The question of patentability is touched when conducting the search and the examination, which is an examination of whether the invention appears to be patentable.

Patent prosecution is the interaction between applicants and a patent office with regard to a patent application or a patent.

In most patent laws, unity of invention is a formal administrative requirement that must be met for a patent application to proceed to grant. An issued patent can claim only one invention or a group of closely related inventions. The purpose of this requirement is administrative as well as financial. The requirement serves to preclude the possibility of filing one patent application for several inventions, while paying only one set of fees. Unity of invention also makes the classification of patent documents easier.

In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention (EPC) and its case law, no explicit, accurate definition of who exactly is an inventor is provided. The definition may slightly vary from one European country to another. Inventorship is generally not considered to be a patentability criterion under European patent law.

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or their successor in rights in exchange to a public disclosure of the invention.

Double patenting is the granting of two patents for a single invention, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention. However, the threshold for double patenting varies from jurisdiction to jurisdiction.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

G 1/05 and G 1/06 are decisions of the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) that were issued on 28 June 2007 and answer questions relating to divisional applications under the European Patent Convention (EPC). The two decisions were published in the Official Journal of the EPO in May 2008.

<span class="mw-page-title-main">Internet as a source of prior art</span> Legality status of citing the Internet for state-of-the-art public knowledge

In the context of patent law, using the Internet as a source of prior art when assessing whether an invention is novel and inventive, may be problematic if it is difficult to ascertain precisely when information on websites became available to the public.

Under Article 82 EPC, a European patent application must "...relate to one invention only or to a group of inventions so linked as to form a single general inventive concept." This legal provision is the application, within the European Patent Convention, of the requirement of unity of invention, which also applies also in other jurisdictions.

During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC out of pending earlier European patent applications. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the earlier application, unless specific provisions in the European Patent Convention (EPC) require something different. A divisional application, which is divided from an earlier application, cannot be broader than the earlier application, neither in terms of subject-matter nor in terms of geographical cover.

In case G 1/15, the Enlarged Board of Appeal of the European Patent Office (EPO) affirmed the concept of partial priority. That is, a patent claim in a European patent application or European patent may partially benefit from the priority of an earlier application.

G 1/11 is a decision issued on 19 March 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that a Technical Board of Appeal rather than the Legal Board of Appeal is competent for an appeal against a decision of an Examining Division refusing a request for refund of a search fee under Rule 64(2) EPC, which has not been taken together with a decision granting a European patent or refusing a European patent application. In other words, the decision deals with the delimitation of competence between the EPO's Legal Board of Appeal and its Technical Boards of Appeal.

G 1/09 is a decision issued on 27 September 2010 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that, following refusal of a European patent application, the application remains pending until the expiry of the time limit for filing a notice of appeal, so that a divisional application under Article 76 EPC may be filed even after the refusal of an application. More specifically, the divisional application may be filed until expiry of the time limit of two months for filing a notice of appeal under Article 108 EPC.

References

  1. 1 2 Daniels, Mark; Parsons, Giles (8 August 2017). "Patents Court grants declarations that dosage regimens were obvious". Journal of Intellectual Property Law & Practice. 12 (8): 624–626. doi:10.1093/jiplp/jpx112. Once a patent application is pending, the applicant can file a new application, called a divisional, in respect of the same subject matter as the original application, and this divisional is entitled to the original application's priority date.
  2. ↑ "Paris Convention for the Protection of Industrial Property". wipolex.wipo.int. WIPO. Retrieved 4 June 2022. (Article 4G) (1) If the examination reveals that an application for a patent contains more than one invention, the applicant may divide the application into a certain number of divisional applications and preserve as the date of each the date of the initial application and the benefit of the right of priority, if any. (2) The applicant may also, on his own initiative, divide a patent application and preserve as the date of each divisional application the date of the initial application and the benefit of the right of priority, if any. Each country of the Union shall have the right to determine the conditions under which such division shall be authorized.
  3. ↑ "Decision of the Administrative Council of 16 October 2013 amending Rules 36, 38 and 135 of the Implementing Regulations to the European Patent Convention (CA/D 15/13)". epo.org. European Patent Office. 24 October 2013. Archived from the original on 27 October 2013. Retrieved 26 October 2013.
  4. ↑ Decision G 1/05 of the Enlarged Board of Appeal of the EPO, Reasons 3.1 and 8.1.
  5. ↑ Opinion G 4/98 in point 5 of the Reasons, cited in decision G 1/05 of the Enlarged Board of Appeal of the EPO, Reasons 8.1.
  6. ↑ Decisions G 1/05 and G 1/06 of the Enlarged Board of Appeal of the EPO.
  7. 1 2 3 MPEP § 201.06
  8. 1 2 35 U.S.C.   § 121
  9. 1 2 MPEP § 803
  10. ↑ 35 U.S.C.   § 121
  11. ↑ Daniels, Mark; Parsons, Giles (8 August 2017). "Patents Court grants declarations that dosage regimens were obvious". Journal of Intellectual Property Law & Practice. 12 (8): 624–626. doi:10.1093/jiplp/jpx112. Second-generation divisionals can then in turn be filed from the first-generation divisionals, thereby creating a cascade of divisionals.
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